Trade Marks 



AND 



Merchandise Marks 



AN EPITOME OF INFORMATION 



CONCERNING THE LAWS OF THE COMMONWEALTH 
OF AUSTRALIA RELATING TO THE 



Marking of Merchandise 

AND THE 

Registration and Infringement of Trade 

Marks 



WITH AN 

APPENDIX 

CONTAINING THE 

TRADE MARKS ACT AND THE COMMERCE ACT 



PUBLISHED BY 
HEPBURN & SPRUSON, TRADE MARK ATTORNEYS 

169 KING STREET, SYDNEY. 
1906. 



Trade Marks 



AND 



MERCHANDISE MARKS 



AN EPITOME OF INFORMATION 



CONCERNING THE LAWS OF THE COMMONWEALTH 
OF AUSTRALIA RELATING TO THE 



Marking of Merchandise 

AND THE 

Registration and Infringement of Trade 

Marks 



WITH AN 

APPENDIX 

CONTAINING THE 

TRADE MARKS ACT AND THE COMMERCE ACT 



PUBLISHED BY 

HEPBURN & SPRUSON, TRADE MARK ATTORNEYS 

169 KING STREET, SYDNEY. 
1906. 



Wv 



<^^ 



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PREFACE. 

This Handbook has been compiled for the use of manufacturers, 
merchants, and those generally whose business involves the handling 
of goods which are subject to the provisions of various laws relating 
to marking. It contains the text and a summary of the provisions of 
the various Commonwealth Acts which require or authorise the appli- 
cation of certain marks to ordinary merchandise and upon articles 
which are the subject of patent and copyright protection and provide 
for civil and criminal prosecutions for the application of false and 
forged marks. In its preparation standard text-books on Trade Marks 
and Merchandise Marks by Sebastian, Kerly, Fulton and Paul have been 
freely drawn on, and reference is made wherever necessary to various 
law reports. It is hoped that the information it contains will be found 
to be ample for most practical purposes; but in connection with the 
procuring of Trade Mark registration, and in regard to involved and 
complicated questions, the reader will find it profitable to seek the advice 
of an experienced Attorney. 






"*/. 






Trade Marks and Merchan- 
dise Marks. 



Part I.— General Principles and Effect 

of tl\e La\ir. 



Legislation. 

The Commonwealth of Australia Constitution Act, 63 & 64 Vict. Ch. 
12, enacts (Sec. 51) that the Federal Parliament shall have power to 
legislate with respect to — 

Trade and Commerce with other countries and among the States ; 

Copyrights, Patents of Invention and Designs, and Trade Marks. 

These Federal powers of legislation are not necessarily exclusive. 

Pursuant to these powers the Federal Parliament has enacted the 
following laws : — 

Customs Act, 1901. ' ^ ""' " 

Patents Act 1903 (Act No. 21 of 1903) 

Trade Marks Act 1905 (Act No. 20 of 1905) — — b 

Copyrights Act 1905 (Act No. 25 of 1905) ' 

Commerce (.Trade Descriptions) Act 1905 (Act No. 16 of . 

1905) ^ 

Designs Act 1906.* 

The State laws affecting marking of Merchandise (otherwise than 
in relation merely to the registration of Trade Marks) remaining 
wholly or partially in force are the following: — 

Victoria: — iTrade Marks Act 1890 (Nos. i & 2) 
South Australia: — iTrade Marks Act 1892 (No. 551) 
Tasmania: — Patent Designs and Trade Marks Act 1893 (No. 6) 
West Australia. — Merchandise Marks Act 1888 (No. 6). 

* At date of issue of this book, the Designs Bill was passing through Parliamenit 
and had not actually come into force 



4 TRADE MARKS AND MERCHANDISE MARKS. 

Various Health Acts and Sale of Poisons Acts touch the subject 
incidentally. 

The policy of the Commonwealth Patent Trade Marks Copyright 
and Designs Acts is to place all these subjects of Crown grant and 
registration on the Commonwealth registers, and to bring the old 
systems of separate State grant and registration, and titles obtained 
thereunder, to an end as rapidly and completely as circumstances will 
allow. The Commonwealth Commerce Act deals only with goods 
imported or exported or intended for export, and does not affect internal 
manufacture, sale or distribution within the States ; but the Common- 
wealth has power of legislation with respect to trade and commerce 
among the States. 

State Laws Prior to Federation. 

Before these Federal laws were passed, powers of legislation and 
administration affecting industrial and intellectual property were in 
the hands of the individual States. In every State, laws provided for 
the grant of Patents and the registration of Trade Marks, Copyrights 
and Designs, and in some cases laws controlling the marking of mer- 
chandise had been enacted. All the State laws providing for registra- 
tion of Trade Marks are extinguished by the new Federal lav/s, which 
in each case contain provisions of a transitory character and declare 
that the old laws shall be continued in effect only in so far as is 
necessary to complete pending proceedings and conserve certain exist- 
ing rights to a more or less limited extent. When the organisation of 
the new Federal department has been completed all the old State 
Records will be under its control. The Merchandise Marks laws 
passed in some of the States continue in force, but of course only control 
internal manufacture, sale, or distribution in the States respectively. 
The Commonwealth Commerce Act controls the marking of goods 
which are actually imported or exported or intended to be exported. 

Functions of Various Laws. 

The Patents Law deals only with Patents for inventions. Only 
two of its clauses are of importance in connection with the marking of 
goods ; these will be referred to later. Those who require information 
concerning Patents are referred to another work issued by us, devoted 
exclusively to that subject. It is necessary, however, to say here that 
the subject matter for which patents may be granted consists for the 
most part of new or improved processes or methods or machines or 
mechanical devices, whose structure or operation depend upon some 
applied principle of mechanics, physics or chemistry, rather than upon 
shape or form merely. The term of a patent is fourteen years, subject 
to seven years' extension in exceptional cases. In the case of movable 
goods a patent relates to the goods themselves, and is not concerned 
with their marking. 

The Trade Harks and Commerce Acts deal with the marlcing 
of goods, whether such goods are patented or copyrighted articles, or 
ordinary merchandise. 



TRADE MARKS AND MBRCHANDISB MARKS. 5 

The Copyright Act deals only with literary and artistic produc- 
tions — ^books, dramatic works, music, pictures, works of sculpture, &c. 

The Designs Act deals only with new designs, that is to say, with 
those novelties which consist in pattern, shape or configuration merely, 
whether the purpose be utility or ornament. The essence of a Design 
is in form rather than (as in the case of a Patent) in an involved 
principle which would permit variation in external appearance without 
the changing of material character or substance. It contains provisions 
requiring the marking of registered designs, under penalty. 



Distinction between Patents, Designs, and 
Trade Marks. 

When a patent has been granted, say for a new description or 
construction of lamp, the manufacture and sale of the lamp become a 
monopoly, and every lamp of the same or substantially the same con- 
struction which is made and sold by others, without leave or license, is 
an infringement of the rights of the Patentee. 
/ But where a trader has registered a Trade Mark for a lamp which 

/ is not the subject-matter of a Patent, all the world may make and sell 
j precisely the same lamp, with this restriction only — that they must not 
' sell it under the registered Trade Mark, for this would be to represent 
the articles as having been made by the owner of the Trade Mark. 

— -^ A Design, on the other hand, like a Patent, has reference to the 

specific substance or corpus of an article, but rather from an artistic 
or configurative than from' a functional point of view. Thus the 
patented portion of the lamp might relate to a new automatic safety 
extinguisher, which might be made and applied and be operative in 
several forms, and still be within the scope of the Patent, while the 
Design might refer to the shape of the lamp or to the decorative stand, 
which could not be varied seriously from the registered design without 
going outside the limit of protection. 

In som.e instances it might even hapoen that the improved fixed 
shape or configuration of an article might render it patentable as well 
as the subject-matter of a Design, in which case the two rights might 
co-exist independently of each other (see Werner v. Gamage). Such 
instances are not unknown, but are likely to be rare. 



Basis and Objects of Trade Mark Laxv. 

The foundation upon which the law relating to Trade Marks and 
Trade Names rests is that the deception of the public by the offer for 
sale of goods as possessing some connection with a particular trader, 
which they do not in fact possess, is a wrong in respect of which the 
trader has a cause of action against any person who is the author of, or 
is responsible for, the deception. 

The object or purpose of the law in protecting Trade Marks is 
twofold : First, it secures to him who has been instrumental in bringing 



6 TRADE MARKS AND MERCHANDISE MARKS. 

into the market a superior article of merchandise the fruit of his in- 
dustry and skill; second, it protects the community from imposition, 
and furnishes a guarantee that an article, purchased as the manufac- 
ture or selection of one who has appropriated to his own use a certain 
Trade Mark, is genuine. The law thus prevents fraud upon the manu- 
facturer, and imposition upon the public. 

The accepted principles upon which the Courts now proceed in 
Trade Mark cases are best expressed in the following deliverance of 
Bacon, V.C., in Ransome v. Graham : — *'A manufacturer who produces 
an article of merchandise which he announces as of public utility, and 
who places upon it a mark by which it is distinguished from all other 
articles of a similar kind, with the intention that it may be known to 
be of his manufacture, becomes the exclusive owner of that which is 
henceforth called his 'Trade Mark.' By the law of this country (and 
the like law prevails in most other civilised countries) he obtains a 
property in the mark which he so affixes to his goods. The property 
thus acquired by the manufacturer, like all other property, is under the 
protection of the law, and for the invasion of the right of the owner 
of such property the law affords a remedy similar in all respects to 
that by which the possession and enjoyment of all property is secured 
to the owners." 

It will be noted that the foregoing quotation speaks only of a 
"manufacturer" adopting a Trade Mark for the goods he has made. 
It must, however, be said that, although this is perhaps the most 
common ownership of a Trade Mark, there are many instances where 
the mark is adopted and applied by those who are not actual makers 
of the goods to which the mark is affixed, but are selectors, packers, 
or merchants merely. 

But, apart from manufactured goods. Trade Marks might be used 
to distinguish substances which are natural products, such as moulders* 
sand, coal, mineral waters, mineral oils, fruit, and the like. Even the 
name of a natural product may be appropriated as a trade name to 
an individual if he alone has exclusive access to the natural product 
(Appollinaris Co. v. Norrish; Radde v. Norman). 

In Trade Mark cases, the question is not whether the complainant 
was the original owner or proprietor of the article made by him, and 
upon which he now puts his Trade Mark, nor whether the article made 
or sold under his Trade Mark by the defendant is equal to his own in 
quality and value. But the Court proceeds on the ground that the 
cornplainant has a valuable interest in the goodwill' of his trade or 
business, and, having appropriated to himself a particular Trade Mark, 
indicating to his customers that the article is made or sold by him or 
by his authority, he is entitled to protection against one who attempts 
to pirate upon the goodwill of his friends or customers, or the patrons 
of his trade or business, by using such Trade Mark without his consent 
or authority. It is hence settled law that the right to use a Trade Mark 
is not a mere personal privilege, but that, within certain limits, it is 
property, capable of being bought and sold, and for the invasion of 
which an action for damages will lie, and the exclusive use of which 
will be Drotected, when necessary, by injunction. 



TRADE MARKS AND MERCHANDISE MARKS. 7 

Office of Trade Mark is to Indicate Trade 
Origin of Goods. 

The office of a Trade Mark is to point out distinctively the origin 
or ownership of the article to which it is affixed or appHed. The Trade 
Mark must, therefore, be distinctive in its original signification, point- 
ing to the origin of the article, or it must have become so by associa- 
tion. While the Trade Mark must indicate the "true origin or owner- 
ship" of the article to which it is apolied, it need not give such indica- 
tion directly or by its own meaning. It is sufficient if it indicate that 
the ownership or origin is by association of the particular mark with the 
particular article. For instance, if an arbitrary or fanciful mark or 
device is applied as a Trade Mark to an article, there need be nothing 
more than this mark or device on the article. The manufacturer's or 
dealer's name and address may be wholly wanting, and the indication 
of the origin or ownership may be the consequence of such continued 
and uniform use of marks, devices, or, in some instances, of words, 
b} a manufacturer or dealer, as to create, in the mind 
of the public, an association between the marks, devices or 
words on the article to which they are attached, on the one hand, 
and the manufacturer or dealer or places of production on the 
other; so that the mere marks, devices or words, which upon their 
face impart no reference to or connection with the manufacturer of 
or dealer in the article to which they are constantly affixed, nor any 
index to its origin, may, because of such customary use upon such 
article, come to indicate clearly its origin or ownership. The Trade 
Mark will then indicate origin or ownership wholly by association. 

Extent of Use Necessary to Identify Mark 

with Goods. 

The association of the Trade Mark with the origin of the goods 
may be acquired only after long use. The effect as well as the value 
of the Trade Mark is the work of time and experience. It is sufficient 
for all purposes if, at the time when the question of the validity of 
the Trade Mark is raised, it is well understood by the trade that articles 
bearing the mark are made or sold by a particular manufacturer or 
vendor. The original use of the Trade Mark may have been begun 
and continued for any length of time without any thought or intention 
on the part of the proprietor of the device of its being or becoming a 
Trade Mark. As stated by the Supreme Court of the United States : 
"The ordinary Trade Mark has no necessary relation to invention or 
discovery. The Trade mark recognised by the common law is generally 
the growth of a considerable period of use, rather than a sudden inven- 
tion. It is often the result of accident, rather than design." It is for 
this reason that a descriptive or geographical term may sometimes 
become a valid common law Trade Mark. When first employed, such 
term may only have been used in its primary descriptive sense, but, 
after long use, it may acquire a secondary or new meaning, and may 
come, when thus used, to designate to the mind of the purchasing 



8 TRADE MARKS AND MERCHANDISE MARKS. 

public the particular article as made or sold by a particular manufac- 
turer or vendor, instead of indicating that the article possesses certain 
qualities, or is to be obtained from a particular locality. 

No Abstract Bight of Property in Trade 

Marks. 

While the exclusive right to use a Trade Mark is property, there 
is no abstract property right in a Trade Mark. It is property only 
when appropriated and used to indicate the origin or ownership of a 
commercial article. The Trade Mark has no separate, abstract exist- 
ence, but is appurtenant to the goods designated. 

Where the Trade Mark itself, in whole or in part, has been appro 
priated, it is not necessary to a recovery in equity to prove fraud or 
an inferior quality of the article of the defendant. 

Aliens' Marks Protected. 

Registration of Trade Marks is granted to aliens, and the rights of 
aliens in their marks are protected in the English Courts as rigorously 
as if they belonged to British subjects. 

Statements Contained in Marks must be 
" Bona Fide." 

It is imperative that the utmost good faith be displayed in connec- 
tion with the wording used in Labels and other Trade Marks. Any 
misrepresentation of fact may lead to refusal of registration, or failure 
of proceedings taken to repress infringement or passing off. 

The using of fictitious Doctors' names on Medicine Marks is the 
commonest form of such misrepresentation. Another common form 
is the employment of words or symbols indicating false places of 
origin or used for the purpose of suggesting that the goods are manu- 
factured in a way other than that used in fact, or contain ingredients 
or possess qualities not contained in or possessed by them. When the 
name of an individual or firm other than that of the applicant for regis- 
tration is used in a mark, evidence of authority for using it will ordin- 
arily be called for before registration is allowed. Such words or 
phrases as "Registered," "To counterfeit is forgery," "Copyright," 
"Registered Desigp," or the like must not appear on the marks when 
submitted for registration unless the mark was previously registered 
in a State. But a mark when registered may have the word "Regis- 
tered" printed on it. 

In the case of the Leather Cloth Co. v. Am. L.C. Co., it was held 
that where an advertisement or Trade Mark states what is not true, 
it cannot be made the subject of protection in the Court. In that case 
the label which it was sought to protect was so framed as to lead the 
public to believe that certain goods were tanned, whereas they were 
not tanned, and were made in the United States of America, whereas 
they were made in England. It was held in Fuente's case that 



TRADE MARKS AND MERCHANDISE MARKS. 9 

the former fraudulent use of marks representing that certain cigars 
were made in Havanna, whereas they were made in Mexico, disentitled 
the applicant to have them registered as new marks, even though the 
dishonest portions of the old marks were omitted, for that would in 
effect have been to enable the applicant to benefit by his former fraudu- 
lent conduct. A similar decision was given in the case of NewTnan v. 
Pinto. The plaintiff was refused protection against an alleged infringe- 
ment of his rights in a Trade Mark and Label used ui connection with 
cigars because the cigar-boxes and labels conveyed a representation that 
the cigars were manufactured in Havanna, which was untrue. In 
these cases the misrepresentation seems to have been actually contained 
in the Trade Mark. The same reasoning would apply if the trade was 
a ''fraudulent trade," as in Perry v. Truefitt, where the use of the 
Trade Name was to sell under the name of "Mexican Balm" some com- 
position which never came from Mexico, but which was said to be com- 
posed from some wonderful herbs to be got only in Mexico. Again 
in the case of Pidding v. How there was evidence that the object was 
to persuade the public that the tea which was called "Howqua's Mix- 
ture" was an extraordinary mixture made up by some great man in 
China, when, in point of fact, it was made in England. ( See also Bile 
Bean Co. v. Davidson.) 

"Scandalous" designs in marks or marks the use of which would 
be prohibited under the Commerce Act or other law or "opposed to 
morality," and also deceptive marks and other marks which would be 
deemed unworthy of support by a Court, are unregistrable (Sec. 114). 

The administration of Equity is founded on perfect truth, and 
when the owner of a Trade Mark applies for an injunction to restrain 
the defendant from injuring his property by making false representa- 
tions to the public, it is essential that the plaintiff should not, in his 
Trade Mark, or in the business connected with it, be himself guilty 
of any false or misleading representation; for if the plaintiff makes 
any material false statement in connection with the property which he 
seeks to protect, he loses, and very justly, his right to claim the assist- 
ance of a Court of Equity. He must come there with clean hands. 

Again, a Trade Mark which contains false representations, so as 
to deceive the public, will not be protected in equity as a valid Trade 
Mark, and cannot be registered as such. In short, as was said by 
Wallace, J., in Ginter v. Kinney Tobacco Co., no principles are better 
settled in the law of Trade Marks than that a generic name, or a 
name merely descriptive of the ingredients, quality, or characteristics 
of an article of trade, cannot be the subject of a Trade Mark; and 
that the use of a name or term which is likely to deceive the public 
in reference to the components or nature of the article to which it is 
applied will not be tolerated. But mere collateral misrepresentations 
do not disqualify. 

Appropriation of Known Designs for Trade 

Marks. 

The source from which a design for a Trade Mark is obtained is 
not a fact bearing on the question of right to registration of it. That 



I o i RADB MARKS AND MERCHANDISE MARKS. 

right arises out of the actual user of the mark upon goods to distin- 
guish them for trade purposes from other goods, and the ownership 
of a mark by one trader in connection with one class of goods will not 
prevent the lawful adoption of it by others for other goods. Thus, a 
printer's catalogue may illustrate a stock block of, for instance, a star 
or an anchor. A grocer may buy the catalogued block from the printer 
and use it to print labels to apply to flour and cocoa or other goods, and 
may register those labels as his Trade Mark for such goods. And if 
the'block itself is not the subject of design registration, the grocer may 
make stereos or electros from it, and the printer cannot prevent him 
from doing so. Subsequently another grocer may see the mark and 
adopt it for candles, and obtain a valid registration of it for candles, 
notwithstanding that it is already registered for flour and cocoa. But 
if the second grocer applied to register the mark for self-raising flour 
or for chocolate, the Registrar would probably exercise his discretionary 
powers and object to the application on the ground that the close simi- 
larity of the goods would make it undesirable to grant separate certifi- 
cates to different persons for the same mark. 

Descriptive Marks Not Registrable. 

Use of the Royal Arms or the like insignia so as to suggest that 
business is being carried on under State authority is prohibited, and 
the onus of disproof put on the user, except where the same is used 
in fact with State authority. 

The question of descriptiveness can hardly arise except in regard 
to Word Marks, which are at once the most valuable and the most 
dangerous of Trade Marks. The mark must be one which is recog- 
nizable by the trade and the consumer as definitely indicating the goods 
to which it is applied to the exclusion of other goods as the product 
of the person who uses the mark. To be distinctive, a mark must be 
different from other marks used upon or in connection with the same 
kind of goods. Any mark which describes the goods, their quality, 
or the purpose for which they are applied, no matter how remote the 
significance may be, provided there is a significance, is not registrable. 
The Courts have shown much caution before giving judgment in favour 
of a mark wherever any reasonable argum.ent has been brought up 
tending to prove that it contained any character of descriptiveness or 
deceptiveness. (See Weingarten v. Bayer.) In determining whether 
a mark is distinctive, regard will be oaid to the extent to which it has 
been used before appHcation for registration, if the use is such as to 
give^ the apparent non-distinctive features of the mark a secondary 
significance or meaning in relation to the registrant's trade. In the 
case of marks registered in a particular colour or colours, colour effect 
will be considered in determining the question of distinctiveness. 

Trade Names. 

A Trade or Commercial Name is a name under which a business is 
carried on, or bv which it is designated, or the name of the place at 
which a business is located. In the former instance it may be the name 



TRADE MARKS AND MBRCHANDISB MARKS, n 

or names of one or more individuals, or the name of a firm, an associa- 
tion, or a corporation. A Trade Name should be considered and treated 
the same as a Trade Mark. If the name is arbitrary or fanciful, the 
adopter and user may acquire an exclusive right thereto, and may pro- 
hibit others from using it, even though such use is innocent or acci- 
dental, and no element of fraud is present. A great many terms used 
as Trade Names, however, are of such character that they cannot be 
exclusively appropriated, and, in seeking to protect such names, reliance 
must be placed on the doctrine of unfair competition. There is a great 
deal of confusion in the decided cases upon this branch of the subject, 
for the reason that courts have not always distinguished between cases 
involving Trade Names that can be exclusively appropriated and those 
in which relief, if granted at all, must be granted on the grounds of 
unfair competition. In other cases where injunctions have been re- 
fused it is probable that, if the cases had been presented as cases of 
unfair competition, relief would have been afforded. A Trade or Com- 
mercial Name differs from a Trade Mark in that it is not affixed or 
applied to a commercial article. In a strict sense, the term ''Trade 
Mark" is applicable only to a mark or device that is affixed or applied 
to a commercial article to indicate origin or ownership. A Trade 
Name is not so applied, but the Courts protect it on the grounds, 
analogous to those on which Trade Marks are protected. Where the 
Trade Name is one that is capable of exclusive appropriation, an injunc- 
tion will be granted against an innocent or accidental use thereof by 
others; but where the name is merely a descriptive or geographical 
term, or one which others have an equal right to use, an injunction will 
be granted only for the purpose of preventing unfair competition in 
business. 

Names which are merely descriptive of well-known classes of 
goods, or of Well-known methods of transacting business, cannot be ex- 
clusively appropriated as Trade Names. Names which are thus des- 
criptive of a class of goods cannot be exclusively appropriated by any 
one. The addition of the word ''Company" only indicates that the 
parties have formed an association or partnership to deal in such goods, 
either to produce or to sell them. 

In nearly all Trade Name cases, even more than in Trade Mark 
cases, elements of unfair competition are present. Usually, when a 
person adopts a Trade Name closely resembling that of a name already 
in use, it is done for the purpose of diverting a part of the first user's 
business or patronage. If this is so, it will usually be made apparent 
to the court, and the case then becomes one of unfair competition. It 
will then be immaterial whether the name used is capable of exclusive 
appropriation or not. 

The right to free and unrestricted competition is freely admitted, 
but such competition to be legal must be honest, and the Courts will not 
countenance fraud or dishonesty under the guise of business competition. 

Improper Registration by Agents. 

In past practice a number of cases occurred in which local repre- 
sentatives of or agents for foreign producing firms registered the Trade 



12 TRADE MARKS AND MERCHANDISE MARKS, 

Marks used on the goods in their own names. Registrations so effected 
are void. In ex parte Lawrence it was held that such a registration 
was a wrongful act on the part of the registrants, which made the 
entry totally void; the Court declined to order the assignment of the 
registration to the principals, because, being registered improperly, the 
registrant had no effective rights to convey — he could not assign it 
without the goodwill of the business, and that goodwill belonged to his 
principals and not to him ; the entry was therefore ordered to be ex- 
punged, and the principals were left to make an application for regis- 
tration de novo in the usual way. 

Similarly, in the Appollinaris case it was held that a person who 
puts another's Trade Mark on the Register cannot be a person ''entitled" 
under the Act, and that the mark of a manufacturer pure and simple 
cannot rightly be assumed by an importer from that manufacturer, or 
b} a person who buys from that manufacturer, unless indeed where 
all the goods of the manufacturer go to that importer or that dealer. 

In Harris v. Ogg (N.S.W. Law Rep.), it was held that the appli- 
cant for registration must be entitled to the mark in some way other 
than by mere priority of application ; consequently the actual owner of 
an established but unregistered mark may go to the Court and procure 
rectification of the Register by the removal of a registration effected 
by a person who, though concerned in the trade, was not the actual 
proprietor of the Trade Mark. 

To obtain valid registration an applicant need not be the actual 
manufacturer of the goods. A mark may be used to indicate a mer- 
chant, packer, or retailer, equally as well as a manufacturer. A manu- 
facturer who makes goods for another person and applies to such goods 
a particular Trade Mark at the request of the purchaser acquires no 
proprietary right to such mark, which in fact belongs to and is regis- 
trable for such goods only by the person who orders the goods and 
directs the appHcation of the mark to them {re Sykes ; also Austn 
W.I. Co.; Leahy v. Glover; Defries v. Helios Co.). 



TRADE MARKS AND MERCHANDISE MARKS. 13 



Part II.- Registration of Trade Marks 
in tHe Coimmonwealtli, Procedure, 
Effect of Registration, and Statutory 
Remedies for Infringement. 



Provisions of Commonwealth Trade Marks 

Act. 

The operation of the common law is preserved and the Act does 
not affect any rights or liabilities acquired or incurred under State laws 
before 2nd July, 1906. From the date mentioned State laws cease to 
have effect ; except in so far as may be required to enable the Regis- 
trar to complete pending proceedings and to govern registrations con- 
tinuing to exist thereunder. An exception is made for applications 
which it may be found necessary to file under a State law in order to 
preserve rights under the International Convention. 

In the New South Wales ^tate law Trade Mark registrations had 
a perpetual currency; in the other States the term of registration was 
14 years, before the expiration of which period the rights could be 
renewed by the mere payment of a fee. The Commonwealth law, 
however, cuts short the life of New South Wales registrations, making 
them operative for 14 years only from 2nd July, 1906, and in the case 
of marks registered in the other States, declares that the registration 
shall cease to be operative when the current 14 year period has ex- 
pired, before which time the registration of the mark must be effected 
under the Commonwealth law if continued protection is sought for. No 
renewal fees under State Acts will be accepted. 

Commonwealth Registration of Trade 

Marks. 

Three forms of registration are provided for by the Trade Marks 
Act. 

(i) For marks already registered in a State or States. 

(2) For marks in use in a State or States before 2nd July, 1906, 
but unregistered. 

(3) For marks propounded as new marks, that is to say marks not 
already in use or registered in the States before 2nd July, 1906. 

Certain marks must be registered as ''Associated" or as "Series" 
marks. The Act also provides for the registration of "Workers' " 
marks, "Commonwealth" marks, and "Standardisation" marks. 

Special provision is made to meet the obvious difficulty arising 
out of the fact that the various State laws were not uniform in respect 
to the requirements as to the nature of a registrable mark. It is not 



14 TRADE MARKS AND MBRCHANDISB MARKS. 

every Trade Mark which is registrable. Only those marks may be put 
on the Commonwealth Register which fall within the terms of the 
Trade Marks Act. 

A mark to be registrable must definitely contain one or other of 
the "essential particulars" enumerated in the Act, unless in the case 
of marks previously used or registered in the States, it is registered 
subject to conditions and limitations dictated by the Registrar, Law 
Officer, or Court. 

^' Essential Particulars " of Registrable 
Trade Marks. 

Section i6 of the Act is as follows : — 

The essential particulars of a registrable trade mark shall be one or more 
of the following particulars : — 

[a] A name or trading style of a person printed, impressed, or woven in 
some particular and distinctive manner ; or 

[b) A written signature or copy of a written signature of the person apply- 

ing for registration thereof or some predecessor in his business ; or 
{c) A distinctive device, mark, brand, heading, label or ticket ; or 

[d) An invented word or invented words ; or 

(e) A word or words having no reference to the character or quality of the 

goods and not being a geographical name used or likely to be under- 
stood in a geographical sense. 

Sections 17, 18 and 19 refer to the additional matters which a mark 
may and may not contain: — 

17. The additional matter which may be added to the essential particulars 
of a registrable trade mark shall be : — 

[a) Any letters, words, or figures ; or 

[b] Any combination of letters, words, or figures, or of any of them. 

18. Except in the case of a Trade Mark properly registered in any State 
Trade Marks Act, a registrable mark must not contain — 

(a) The words "Trade Mark," "Registered," Registered Design," "Copy- 
right," "Entered at Stationers' Hall," "To Counterfeit this is For- 
gery," or words to the like effect ; or 
{b) A representation of the King, the Queen, or any member of the Royal 
Family or of the Royal Crown 

19. A registrable trade mark must not contain — 

(a) The word "Royal" or any word, letter, or device^ indicating Royal 

or Government patronage ; or 

(b) A representation of the Royal Arms, or of the national flag of the 

United Kingdom, or of the flag of the Commonwealth, or of the 
national arms of the United Kingdom, or of the arms or seal of the 
Commonwealth or any State ; or 

(c) A representation of any living person without his written consent. 

Name Marks It will be observed that the name of a person 

or firm is not registrable alone ; it is only registrable when presented 
in some shape which apart from the name itself introduces a distinctive 
character. If the name proposed for registration were not the proper 
name of the applicant and were the name of some other identifiable 
person who did not assent to the use of it, the Registrar's discretion- 
ary powers would enable him to reject the application. It is the policy 
of the law to refuse registration for mere surnames in association with 



TRADE MARKS AND MERCHANDISE MARKS. 15 

the names of goods, for instance, "Brown's Flour." Marks of that 
kind are of particular value in trade, but practical experience has 
proven the unwisdom of securing a right to individuals to appropriate 
a surname in this way; for other persons with the same name would 
thereby be excluded from trading in the same goods under their name. 
It remains to be pointed out, however, that the remedy by proceed- 
ings for ''passing off" would still be effective to protect the first user 
where the name used had come to bear a secondary signification. 
While the Court would not prevent a rival trader from legitimately 
using his own name even if it were the same name as that of a prior 
successful trader, it would still impose on him the obligation of using 
his own name in such a way as to clearly distinguish his goods from 
the goods of the prior trader. A name printed in type which is m 
ordinary use would not be registrable. 

Signatures.- — It is clear that a signature mark is a dan- 
gerous mark, except in some very special class of case, for the regis- 
trant under this sub-section could not complain of another trader using 
his signature as a Trade Mark. Where the names happen to be iden- 
tical, or nearly so, the distinctiveness of the signatures as against one 
another would in some cases be reduced almost to vanishing point, and 
the registration would be next to useless. 

Devices. — A Trade Mark which has a device as its central 
figure is an advantageous Trade Mark in that it appeals to the eye 
quite apart from any wording which is used in connection with it. The 
chief objection is the difficulty of choosing a mark sufficiently simple 
and striking to fix itself in the memory and to suggest some name by 
which it can be indicated, whilst securing at the same time sufficient 
difference from other devices or words or names suggesting them used 
in the same line of trade to ensure distinctiveness. 

A portrait is a registrable device, provided that it is not a portrait 
of a person identified with the trade, so that traders generally could 
claim to be fairly entitled to use it. ( See Anderson's case, re Liebig's 
Extract.) Where, however, the name or portrait of a person believed 
by the Registrar to be living is used, registration will be refused until 
the consent of such person to the use of his name or portrait be 
obtained. Portraits are not very valuable as Trade Marks because 
infringement can only be proved against goods on which not merely 
another portrait, but necessarily a similar portrait is used. 

A representation of the goods to which the mark is to be applied 
is not a registrable "device." iTbus the picture of a telephone would 
not be a registrable mark in respect to telephones, though it might 
be a good mark in respect to flour. While that is so, it is conceiv- 
able that it would be possible to design a registrable device involving 
a representation of the article to which it is applied. For instance, 
a mark consisting of a representation of bags of flour arranged in the 
form of a star or triangle might be a registrable mark for flour. The 
rule is that the mark must not be such a one that its registration 
would restrict the liberty of rival traders to use in any reasonable 
manner representations of articles sold by them for the purpose of 
describing or indicating such articles. 



i6 TRADE MARKS AND MERCHANDISE MARKS. 

Devices or words of a national character, such as the Royal Arms, 
or Crown, or national or State Arms, or flags or seals or public armorial 
decorations, bearings or insignia, or the words "Royal" or ''Govern- 
ment" or words indicating Royal or Government patronage, will not 
be registered. 

Marks and Brands — 'The terms mark and brand have 
never been adequately defined, except to this extent, that they are 
deemed to include only something applied by marking or branding and 
not falling within the other definitions. A word must be propounded 
for registration as a word and not as a brand. (See Leonard & Ellis' 
case; Holt's case.) Letters or figures cannot be brought within the 
scope of the definitions by calling them ''marks and brands." Initials 
are not registrable, and it is doubtful whether a monogram is regis- 
trable. (Lucke V. Webster.) 

Headings. — Heading means a pattern of marking such as is 
woven at the end of a piece of cloth. Section 21 is important in rela- 
tion to "Heading" marks which consist essentially in colour schemes. 
LTnder that section a registered mark may be limited to a particular 
colour or colours, so that it is possible that precisely the same mark 
in outline might be registrable by different persons, provided each of 
them adopted a different colour scheme, so that the marks when pre- 
sented would in each case be different in substance and in general 
appearance, though identical in outline. In ordinary cases of name 
devices, &c., a mark is usually registered without limitation to colour, 
and the registration is then effective for the mark, quite irrespectively 
of the colour in which it is used ; but registration may be obtained for 
a particular colour or colours, and infringement will then only occur 
when the registered colours are used. 

Labels and Tickets. — A label or ticket consists of a 
number of words, or words and devices, or a device alone printed on 
a piece of paper to be stuck upon or attached to the goods or their 
envelope. A mark otherwise unregistrable will not become registrable 
merely because it is printed on a paper slip and called a label. (See 
Great Tower Street Tea Co. v. Smith.) The case would not be im- 
proved by using a conventional border or other non-distinctive matter. 
The name of a firm printed in common letters upon an ordinary label 
would not make a registrable label. (Birmingham Vinegar Co. T. 
Mark.) 

An Invented Word or Words. — An invented word 
is a word newly coined and not directly descriptive of the goods to 
which it is applied. It is no objection that it may be traced to a 
foreign source or that it contains a covert allusion to the character or 
quality of the goods — it need not be a mere euphonious association 
of letters wholly meaningless. "Savonal" for soap, "Tachytype" for 
type-composing machines, "Tabloid" for tablets of chemical products 
have been held good marks. But mere dictionary words compounded, 
contorted, misspelt or used with prefixes or suffixes are not invented 
words. "Asorbine," "Cheapandgood," "Phiteesi," "Uneeda" (You- 
need-a), "Pirle" (Pearl) have all been decided against. A word built 
up on correct etymological principles, whose clearly-ascertainable mean- 



TRADE MARKS AND MBRCHANDISB MARKS. 17 

ing is descriptive of the nature or qualities of the goods to which it is 
applied, would probably not be registrable. 

Non-Descriptive Non-Geographical Words. — ^This definition 
provides for known words or expressions arbitrarily chosen 
from the English or from foreign languages. Words savouring 
of advertisement, recommendation or description or being a mere sur 
name are not registrable. The purpose of the limitations is to pre- 
serve the right of the public to use known words or literal variations 
of them in their ordinary sense, and the Office will jealously guard the 
public right in this regard. The prohibition on the ground oi 
geographical character only applies when the use of a geographical 
name would be understood in a geographical sense, but this qualifi- 
cation should be availed of with caution, as it cannot always be said 
definitely whether a geographical name has or has not a geographical 
significance. It is, however, not clear whether the test must be sought 
in the name itself or having regard to the nature of the goods on 
which it is used. In the former case the excluding qualification would 
only apply to rarely-heard-of geographical names, and no' names likely 
to be found in a common atlas would be registrable ; in the latter case 
a name that would be registrable for one class of goods would not be 
registrable for another. There are of course many geographical 
names which are common in other connections, and the qualification 
would apply to these and leave them open for registration if they are 
not so used as to suggest a geographical interpretation. It 
is submitted that the former reading is the correct one, and that quite 
irrespective of the nature of the goods a word mark will be tested 
for geographical significance, and registration refused in the case of 
known geographical terms except where the accepted primary signifi- 
cation is other than geographical. (See Magnolia T.-M. case; Apol- 
linaris T.M.) But where the word is the name of the place of manu- 
facture of the goods, then, no matter how little known the place is, 
the word has a geographical significance. Whilst the names that are 
registrable are defined by sub-section (a), there remain another class 
of names which come within the present sub-section — that is, the names 
of imaginary or mythical personages such as "Trilby" (Holt's case), 
"Hamlet," ''J^piter" and the like who are not ''individuals" in the 
sense of sub-section (a). Such names are as properly registrable as 
other known words having no meaning in relation to the goods to 
which they are applied, for instance ''Monkey," or "Ivy," or "Red 
Cap" for soap. 

A word alone is not a Trade Mark when it is applied to desig- 
nate, not the article of a particular maker or seller, but the kind or 
description of thing which is being sold. And it was held by the Court 
of New South Wales that, where a word had been used by the in- 
ventor in connection with a particular class of goods, but had not been 
registered as a Trade Mark, and it was made use of by another, not 
with any fraudulent intention of counterfeiting the goods of the in- 
ventor, but to denote the quality and character of the article sold, and, 
the word had come to be so understood, it had become publici juris, 
and could not thereafter be registered as a Trade Mark. And when. 



i8 TRADE MARKS AND MBRCHANDISB MARKS. 

an unpatented medicinal preparation had come to be popularly known 
by the name of the person, another person lawfully engaging in the 
manufacture of it has no right to appropriate that name to his own 
exclusive use as a proprietary Trade Mark or Trade Name. 

It will be clear, therefore, that when a manufacturer has invented 
a new name, consisting either of a new word, or a word or words 
in common use, which he has applied for the time to his own manu- 
facture or to an article manufactured by him, to distinguish it from 
those manufactured and sold by others, and the name thus adopted 
is not generic or descriptive of the article, its qualities, ingredients or 
characteristics, but is arbitrary or fanciful, and is not used merely to 
denote grade or quality, he is entitled to be protected in the use of 
that name, notwithstanding that it has become sO' generally known that 
it has been adopted by the public as the ordinary appellation of the 
article. 

Additional Features of flarks.. — So long as a mark contains one 
of the "essential particulars" mentioned in section i6 it is registrable 
whether it contains additional matter or not ; and in registering it the 
essential particulars upon which the registrant intends to rely must 
be stated. The correct statement of the essential particulars is a 
matter of great importance because it is the basis of the registration. 
The mark may contain an unlimited quantity of additional matter in 
the shape of letters, words or figures. When the mark contains in 
addition to its distinctive essential particulars parts not forming the 
essential particulars of other marks owned by the same proprietor, or 
contains common trade matter or other non-distinctive matter, the; 
applicant for registration may be obliged to "disclaim" the exclusive 
right to such additional matter or insert in his application a disclaimer 
adequately defining the rights he claims. The name or address of an 
applicant or of his predecessor in business need not be disclaimed. 
The making of a disclaimer will not prejudice any rights in case of pro- 
ceedings for "passing off." 

"Disclaimers." — Where a mark, or matter contained in a mark, 
is used contemporaneously and bond iid\e by three or more persons in 
any one State, such mark or matter is deemed common property and 
is not registrable; and if it appears in a mark otherwise registrable, 
disclaimer will be called for if application for registration thereof is 
made. Similarly non-distinctive matter will be subject to disclaimer 
at the Registrar's discretion, and such other matter (not being the sub- 
ject to separate registration by same applicant) as the mark contains 
in addition to its essential particulars. 

Associated Marks. — Where the same proprietor applies to 
register a second or subsequent mark similar to one already registered 
by him, the Registrar may decline to register it as an independent mark 
on the ground that if it were assigned whilst the earlier registration 
were retained, trade confusion would arise as between the original pro- 
prietor and the assignee. In that case, registration of the subsequent 
marks will be effected as "Associated" marks. That is to say, the re- 
lated marks will be bunched on the register so that they will not be 
assignable separately; otherwise the registrations stand quite indepen- 



TRADE MARKS AND MBRCHANDISB MARKS. 19 

dently, as if registrations of distinct marks (Sec. 29). Similarly, 
where a proprietor desires registration of two or more "series" marks, 
that is, marks substantially identical in design but differing in regard 
to names of goods or other descriptive matter contained thereon, such 
marks are registrable only in the "associated" form (Sec. 31). The 
object of the provision of the Act in connection with disclaimers and 
the bunching of related marks is to make each registration stand quite 
alone and to show on its face precisely what it covers. The Regis- 
trar's duty is to guard against public confusion in the case of marks 
belonging to the same proprietor as well as in the case of marks belong- 
ing to different proprietors ; in the first case he will require that similar 
marks be bunched and registered as "Associated" marks, which, as 
explained elsewhere, can only be assigned in the bunch; and in the 
second case he will refuse any application for the registration of a 
mark deceptively similar to any mark already registered by other pro- 
prietors. 



20 TRADE MARKS AND MBRCHANDISB MARKS. 



CommonwealtH IVe^istratioxi of Trade 
Marks which were already registered 
or in use in the States before 2iid 
Jtxly, 1906. 



In the case of Trade Marks properly registered under one or more 
of the old State laws, registration may be effected notwithstanding that 
the mark does not contain any of the essential particulars required in 
the case of new marks. Similarly, marks in use before 2nd July, 1906, 
in one or more of the States and not containing such essential parti- 
culars may also be registered, provided they would have been regis- 
trable under the State Law (Sees. 8, 9). This provision will be operative 
chiefly in the case of N.S.W. marks, because the registration laws of 
the other States, generally speaking:, contained more restrictive pro- 
visions as to registrable marks than the new Commonwealth Act. 
It is intended also to continue the policy of the State laws, which 
(following on the lines of the English Acts of 1875-6) acknowledge 
the rights to registration of owners of marks in use before those laws 
were passed. 

When these old State marks do in fact contain the prescribed 
essential particulars they would be registrable in any event ; but usually 
it will be advantageous to propound them for registration as old marks 
to take advantage of the improved status thus secured in the event of 
opposition or other proceedings arising. When, however, they do not 
contain the prescribed essential particulars they are at a disadvantage, 
for, although they are registrable, the Registrar may make the regis- 
tration "subject to such conditions and limitations as to mode or place 
of user" as he thinks fit. Even where an old State mark, whether re- 
gistered or not under the State law, and even if registrable as a new 
mark, is submitted for registration as an old mark, and it appears that 
the same or nearly identical mark is owned or registered in any part 
of the Commonwealth by another proprietor, the Registrar may in like 
manner impose conditions and limitations as to mode or place of user 
to preserve the rights of each proprietor. 

It will be observed therefore by proprietors who' hold State regis- 
trations for marks not containing the essential particulars (see S. 16) 
called for in the case of new marks, that they can only obtain 
Commonwealth registration on the Registrar's terms, and as the State 
Certificate is cancelled upon the issue of a Commonwealth Certificate, 
they may in some cases be well advised to rest on their existing regis- 
trations as long as those registrations will continue to hold good. 
There may be special reasons for this in particular cases, as where a 
rival trader claims a similar mark, for, although such rival trader 



TRADE MARKS AND MERCHANDISE MARKS. 21 

has no State registration to conflict with that held by the applicant, it 
would still seem the Registrar has power to impose conditions and 
limitations in favour of such rival trader, qualifying any registration 
he may allow the applicant. And it should be observed that even where 
the old mark does contain the essential particulars which would qualify 
it for registration as a new mark, the Registrar has still the power to 
quahfy the registration "with such conditions and limitations as he 
thinks fit to impose to preserve the rights of each proprietor." In the 
case of marks propounded as new marks the Registrar has power 
(Sees. 34, 43) to qualify a registration with "conditions" and to require 
"modifications" of a mark either on his own initiative or in determin- 
ing opposition proceedings ; and of course the Law Oflicer and the 
Court have in all cases similar powers of appeal. 

There are many cases in which these provisions will operate in 
practise. Frequently similar marks are in use by different firms in 
different States, whose respective businesses are practically confined 
to their own States. No difficulty arose in the majority of those cases 
whilst States registrations were independent. Now, however, when 
one certificate covers all the States, the case is different, for account 
must be taken of all interests thus brought into direct conflict. In 
such cases the proprietor who secures an unconditional registration 
before his inter-state rival appears on the scene will have an advan- 
tageous position, for his rival will then be forced to go to the Court 
(Sec. 71) to procure the insertion on the register of "any exception or 
limitation affecting the registration of the Trade Mark," and the regis- 
trant will then lose only just so much as justice demands, and will not 
have to take something less on the basis of a compromise dictated by 
the Registrar when two interfering claims come before him in applica- 
tion proceedings. It is anticipated that the Registrar will be called 
upon to deal with many conflicting claims under these clauses between 
rival traders in New South Wales and Victoria, and New South Wales 
and South Australia. In some of these cases the difficulty is greater 
than would appear at first sight, because the conflicting claims overlap, 
and cannot be pacified by alloting State territorial limits to one and 
the other respectively. Thus, for instance, the Broken Hill district, 
which is New South Wales territory, gets most of its supplies from 
South Australia, and some of the marks used, which are registered by 
Adelaide firms in South Australia, are very similar to marks used 
on other New South Wales trade generally by Sydney merchants, who 
have obtained New South Wales registrations for them. 

Under these clauses (8 and 9) another provision is made to the 
effect that when an old mark is propounded for registration and it is 
found that it is "common to trade" in a State other than that in which 
user or State registration is claimed, any Certificate issued shall not 
confer exclusive rights in the State in which the mark is in fact common 
to the trade. 

Under some circumstances user of one mark may be taken to be 
equivalent to use of other marks bunched with it as "Associated" 
marks (Sec. 30). In those cases where the form of an old mark has 
been modified without altering its general character, the altered mark 



22 TRADE MARKS AND MBRCHANDISB MARKS. 

may be submitted for registration as an old mark to continue the right 
estabHshed by user of the original mark of which it is a modification. 

When an application refers to a mark already registered or sub- 
mitted for registration in one or more of the States, particulars of 
the official action on the State's applications must be funished under 
Statutory Declaration, and facsimiles of the mark as registered in the 
States must be supplied. 

In all cases 14 copies of the mark proposed for registration must 
be supplied, 9 of them attached to the prescribed forms. 

All applications, Documents and Notices may be signed and all 
Hearings attended and other proceedings conducted by a Registered 
Trade Marks Attorney on behalf of his principal. 

Effect of Registration. 

The object of the Act is not toi create new rights but to regulate 
the use of and the means of protecting Trade Marks other than 
Common Law marks. It provides, as did the old State laws, for the 
acquisition of title to Trade Marks by registration, though it 
IS to be remarked that the Act does not declare definitely 
that mere registration shall be equivalent to user. In the absence 
of special legislation, a Trade Mark would not be entitled to con- 
sideration at the hands of a Court unless on the basis of user. Under 
the Act either a Trade Mark which is in use, or a new mark, may 
be registered if it is a mark which comes within the Act's definition 
of a registrable mark. The Act also regulates procedure in infringe- 
ment actions, simplifying it by making the fact of registration prima 
facie evidence of title, and, in some instances, conclusive proof of it. 
In the case of registrable marks the Act constitutes registration, gener- 
ally speaking, the condition to be performed precedent to the beginning 
of an action for infringement, but a registrable mark may without 
registration be sued on as a common-law mark, and the ordinary 
common-law remedies obtained ; but without registration an action for 
infringement cannot be taken, nor can the special remedies authorised 
by the Act be obtained. In the case of marks registered under the old 
State laws, however, actions for infringement may be taken and statu- 
tory remedies obtained under those laws so long as the State registra- 
tions remain effective. The nature of the particular kinds of marks 
which are registrable under the Act are defined in it, and consequently 
those marks only are capable of receiving the protection which the Act 
affords. Registration gives an independent title apart from the rights 
acquired by user, so that a registrant need only rely on his title bv 
user if the property in the registration is questioned, or if within five 
years conflicting rights arise for determination of the Court. Regis- 
tration confers no rights except in regard to the goods for which a 
mark is registered, and of course if there is any limitation imposed 
by the Registrar in effecting registration that also will control the 
extent of the nature of the right conferred by registration. If a mark 
IS actually used for one description of goods only, although registered 
for others also, the exclusive rights conferred by the Act do not extend 
to the latter. Thus, where the registrant of a mark for "Unwroueht 



TRADE MARKS AND MBRCHANDISB MARKS. 23 

and partly wrought metals used in manufacture" only used the mark 
upon sheet-iron goods, to which line his business is confined, an order 
was made for the rectification of the Register by confining the state- 
ment of goods to sheet-iron. If the register shows that the registra- 
tion was five years old at the date when it is put in evidence, it will 
be conclusive evidence of the validity of the registration so long as 
the registration stands, but this is conditional upon proof that the 
registrant or his predecessor in title has continuously used the mark 
during that term to a substantial extent and without any actual inter- 
ruption for an aggregate of one year. Even after five years, however, 
the registration may be attacked upon application to the Court for an 
order for expunging or varying it. Whilst, therefore, in an action for 
infringement a registration of five years' standing has a title which 
cannot be objected to, it is still settled law that an application may 
be made to the Court to rectify the register, if in fact the registration 
is not entitled to remain on the register. 

Term of Hegistration* 

When a Trade Mark has been registered it is protected for 14 
years. At the end of that time, and so on at the end of every 14 
years, the payment of a fee ensures another 14 years' protection. 
Three months' grace is allowed, subject to payment of a fine. When 
the protection has elapsed b}^ failure to make the renewal payment, the 
mark is removed from the register, but under certain circumstances 
the Registrar may for the term of i year still continue to regard the 
registration as a current one for the purpose of quoting it against 
new applications for registration. 

Registration Ineffective Without User. 

Although the actual use of a mark is not a condition precedent 
to registration, nevertheless an applicant must at least intend to use 
any mark which he registers on the goods for which he registers it, 
and if he registers without such an intention, the mark will be removed 
from the Register. The intention must be a definite and present in- 
tention to deal in the goods and apply the rnark to them, and not a 
mere general intention of extending business at some future time, if 
it should be thought desirable to use the mark on other lines (see 
Batts T.M.). If a mark is registered merely for the purpose of pre- 
venting other traders from using it, it will be removed (see Apollinaris 
case). 

Proceedings on Application to Register 
Trade Marks. 

Trade Marks must be registered in respect of the particular goods 
or classes of goods on which they are used. The use of a Trade Mark 
by one manufacturer or vendor will not ordinarily prevent another from 
adopting the same Trade Mark for a different article. He cannot 
prevent its use when the use is entirely innocent, and represents nothing 



24 TRADE MARKS AND MBRCHANDISB MARKS. 

in regard to the plaintiff's connection with the goods, and does not 
impose on the public. A separate registration must be effected for 
every class. In the case of marks used on a number of lines of 
different goods a corresponding number of separate registrations is 
called for. In some cases even similar goods come under separate 
classes. Thus, Soap comes under five classes, viz. : — (2) dog soap and 
disinfecting soap; (3) medicated, for human use; (47) common; (48) 
perfumed for shaving; (50) silversmiths' soap. Again, Wire falls 
under Class 5, Wire fencing and netting and Wire rope under Class 13, 
and Wire mattresses under Class 41. Again, Metal washers are under 
Class 13, Leather washers Class 37, and Rubber washers Class 40. 
The classification is as follows: — 

1. Chemical substances used in manufactures, photography^ or philoso- 

phical research, and anti-corrosives. 

2. Chemical substances used for agricultural, horticultural, veterinary, 

and sanitary purposes. 

3. Chemical substances prepared for use in medicine and pharmacy. 

4. Raw or partly prepared vegetable, animal, and mineral substances 

used in manufactures, not included in other classes. 

5. Unwrought and partly wrought metals used in manufactures. 

6. Machinery of all kinds, and parts of machinery, except agricultural 

and horticultural machines included in Class 7, 

7. Agricultural and horticultural machinery, and parts of such machinery. 

8. Philosophical instruments, scientific instruments, and apparatus for 

useful purposes. Instruments and apparatus for teaching. 

9. Musical instruments. 

10. Horological instruments. 

11. Instruments, apparatus, and contrivances, not medicated, for sur- 

gical or curative purposes, or in relation to the health of men or 
animals. , 

12. Cutlery and edge tools. 

13. Metal goods not included in other classes. 

14. Goods of precious metals (including aluminium, nickel, Britannia 

metal, etc.) and jewellery^ and imitations of such goods and 
jewellery. 

15. Glass. 

16. Porcelain and earthenware. 

17. Manufactures from mineral and other substances for building or 

decoration. 

18. Engineering, architectural, and building contrivances. 

19. Arms, ammunition, and stores not included in Class 20. 

20. Explosive substances. 

21. Naval architectural contrivances and naval equipments not included 

in Classes 19 and 20, 

22. Carriages. 

23. (a) Sewing cotton ; {b) Cotton yarn, 

24. Cotton piece goods of all kinds. 

25. Cotton goods not included in Classes 23, 24, or 38. 

26. Linen and hemp yarn and thread. 

27. Linen and hemp piece goods. 

28. Linen and hemp goods not included in Classes 26, 27. and 50. 

29. Jute yarns and tissues, and other articles made of jute not included 

in Class 50. 

30. Silk, spun, thrown, or sewing. 

31. Silk piece goods. 

32. Other silk goods not included in Classes 30 and 31. 

33. Yarns of wool, worsted, or hair. 

34. Cloths and stuffs of wool, worsted or hair. 

35. Woollen and worsted and hair goods not included in Classes 33 and 34. 

36. Carpets, floor-cloth, and oil-cloth. 

^y. Leather, skins unwrought and wrought, and articles made of leather 
not included in other classes. 



TRADE MARKS AND MERCHANDISE MARKS. 25 

38. Articles of clothing. 

39. Paper (except paperhangings), stationery, and book-binding. 

40. Goods manufactured from india-rubber and gutta-percha not included 

in other classes. 

41. Furniture and upholstery. 

42. Substances used as food, or as ingredients in food. 

43. Fermented liquors and spirits. 

44. Mineral and aerated waters, natural and artificial, including ginger- 

beer. 

45. Tobacco, whether manufactured or unmanufactured. 

46. Seeds for agricultural and horticultural purposes. 

47. Candles, common soap, detergents ; illuminating, heating, or lubri- 

cating oils ; matches ; and starch, blue, and other preparations for 
laundry purposes. 

48. Perfumery, including toilet articles, preparations for the teeth and 
hair, and perfumed soap. 

49. Games of all kinds and sporting articles, not included in other classes. 

50. Miscellaneous : — 

(i) Goods manufactured from ivory, bone or wood, not included 
in other classes or sub-classes. 

(2) Goods manufactured from straw or grass not included in other 

classes. 

(3) Goods manufactured from animal and vegetable substances, not 

included in other classes or sub-classes. 

(4) Tobacco pipes. 

(5) Umbrellas, walking sticks, brushes, and combs. 

(6) Furniture cream, plate powder. 

(7) Tarpaulins, tents, rick-cloths, rope, twine. 

(8) Buttons of all kinds, other than of precious metal or imitations 

thereof. 
{9) Packing and hose of all kinds. 
(10) Goods not included in the foregoing classes. 
[Note. — Each sub-class in Class 50 is deemed to be a separate class. The 
Registrar determines the class in case of doubt, and where goods are made of 
mixed materials.]* 

Applications for registration are examined on three points, viz. : — 

1. Whether the mark is one that is registrable under the Act; 

2. Whether it is deceptively similar to any mark previously regis- 
tered in the Commonwealth or in a State; 

3. Whether it contains matter the common property of the trade. 
Upon the Examiner's Report the Registrar determines whether he 

will accept the application, with or without modification, or with or 
without conditions, or whether he will refuse it. He gives notice to 
the applicant accordingly, and in case of objection gives the applicant 
14 days to elect whether he desires the Registrar to hear the case. If 
the applicant demands a hearing, a date is fixed and he receives 10 
days' notice. From any conditional acceptance there is a right of 
appeal to the Law Officer, and from the decision of the Law Officer 
there is an appeal to the High Court or to the Supreme Court. The 
applicant may, however, appeal direct to the Court. 

The Rules contain elaborate provision for the procedure before the 
Registrar, Law Officer and Court. 

The procedure before the Law Officer and the Court is of a 
technical character, and need not be detailed here. 

* At the date of issue of this book, the classification here printed had been 
provisionally adopted ; but a proposal to adopt another scheme was under considera- 
tion. 



26 TRADE MARKS AND MBRCHANDISB MARKS. 

After acceptance, the application is advertised in the Official 
Journal. A line block of the mark must be supplied by the applicant 
for this purpose. Applications not completed within one year and 14 
davs of filing, owing to default of the applicant in observing any pro- 
vision of the Act or Rules, or decision thereunder, become void, unless 
in special cases in which the Registrar is empowered to grant an en- 
largement of time. 

After advertisement, applications are held for 3 months, during 
which time proceedings may be commenced by anyone to oppose the 
issue of a certificate. 'The 3 months' period may be enlarged upon 
special apolication made for the purpose before its termination. These 
proceedings are commenced by the filing of a Notice of Opposition 
stating the grounds of objection in a prescribed form. 

If a Notice of Opposition be filed, the applicant is allowed 3 mxonths 
(of which time an enlargement can be obtained) to file a "Counter- 
statem.ent" embodying the grounds relied on in support of the applica- 
tion ; and if no counterstatement is filed the application lapses without 
liability for costs. If, however, a counterstatement is filed, the appli- 
cant is liable for costs in the event of the opposition succeeding. Simi- 
larly, the opponent may have costs awarded against him in the event of 
the opposition failing. 

After the filing of a counterstatement by the applicant, the oppo- 
nent has one month to file evidence on Statutory Declaration in sup- 
port of the opposition, ana subsequently the applicant has one month 
to file similar Declarations answering; then the opponent has 14 days 
for reply. For the filing of any further evidence, special leave or the 
consent of the opposite party must be obtained on either side. Dupli- 
cates of all evidence must be served on the opposite side. Failure 
to file evidence entails abandonment of an opposition; and it entails 
abandonment of the application unless the applicant elects not to file 
evidence and serves notice on the Registrar that he will rely on the 
documents filed with the application. 

When the evidence is complete, the Registrar appoints a day for 
hearing of the case, and the parties must give the prescribed notice of 
intention to appear, for other^vise they will not be entitled to be heard. 

Before definitely exercising any discretionary power adversely 
upon an application the Registrar will, if requested by the applicant 
within I m.onth of his receiving notice in the matter, give the appli- 
cant an opportunity of attending a hearing, and if the applicant does 
not then formally intimate that he will attend, the application will be 
regarded as abandoned. 

Anticipation by Prior Registration. 

Anticipation by Prior Registrations — No mark will be regis- 
tered which is the same as or deceptively similar to a mark already 
registered. When it is found that an earHer registration stands in 
the way of an application, the applicant must go to the Court to have 
the conflicting registration removed, for so long as it is on the Regis- 
ter the Registrar must respect it. (Sec. 25.) In cases of bond Me 
concurrent use, corresponding registrations may be granted to two or 



TRADE MARKS AND MERCHANDISE MARKS. 27 

more separate proprietors subject to conditions and limitations dictated 
bv the Registrar or on appeal from him. It would appear probable, 
however, that this can only be done when the interfering applications 
are both before the Registrar at the one time ; for otherwise he is bound 
by the existing registrations and cannot issue a certificate in deroga- 
tion of an existing one except by order of the Supreme Court. A 
registration is prima facie evidence of the right of the registrant to 
the exclusive use of the registered mark, and of the validity of the 
registration thereof. (Sec. 50.) The peremptory necessity of effect- 
ing registration without delay will be quite apparent to Trade Mark 
proprietors upon consideration of the effect of these clauses. 

The Supreme Court only has power to order the registration 
of a mark to override an existing registration. Once a registration 
is on the books, it binds the Registrar. Where rival applicants claim 
the same or similar mark, the Registrar may reqiiire the submission 
of their claims to the Court for determination before he grants regis- 
tration, but where the case appears to be one of honest concurrent 
user, the Registrar may exercise his discretion and register the mark 
for both applicants (but presumablv only when both applicants are 
before him at one time, and not when a Certificate has already been 
issued as one of them) subject to such conditions and limitations as 
he may think fit to impose. Upon registration being effected, the date 
of application shall be deemed to be the date of registration. 

Attendance of Witnesses, &c. 

In all proceedings the Registrar may summon and swear wit- 
nesses, order the production of documents and award costs as a Court. 
He has power to inflict a fine of £50 for disobedience. A penalty 
of 3 years' imprisonment is prescribed for the making of any wilful 
false statement or representation in any proceedings before the 
Registrar. There is a similar penalty for falsifying the Register or 
copies therefrom. 

Cancellation and Alteration of Registration. 

The Court may also, at the instance of the Registrar or of any 
person aggrieved by an entry, order the rectification of the Register 
by the variation or erasure of the entry^. complained of. The Court 
may cancel the registration of any 'w^^ which has fallen into disuse 
for 3 years or over and has not been in use for 6 months prior to 
the cancellation proceedings. 

The Registrar has power also to correct or alter the names and 
description of registrants, to enter disclaimers or memoranda relating 
to registered marks, and to cancel registrations on request of the regis- 
trants. For making any alteration in the substance of a registered 
mark, the leave of the Court must be obtained. 

Assignment of Trade Marks. 

Except in the case of "Workers," "Commonwealth," and "Stan- 
dardisation" marks, registered Trade Marks are only assignable in 



28 TRADE MARKS AND MBRCHANDISB MARKS. 

connection with the goodwill in the goods on which they are used. 
Where the goodwill is divided, as in the case of dissolution of part- 
nership, the registered Trade Marks (other than ''associated" marks, 
which must be kept bunched) may be divided and apportioned among 
the business successors, subject to such conditions as the Registrar 
may dictate to conserve public interests. 

The Registrar has the power to enter notice in the Register of 
Assignments of registered Trade Marks; but he is prohibited from 
receiving or putting on the Register notice of any trust, expressed, 
implied or constructive. 

There is no such thing as licensing another person to use one's 
Trade Mark. If the owner of a mark permits it to be used in con- 
nection with the goods of other traders he loses his claim to it. ( Wood 
V. Lambert and Butler). 

Prohibition Against Infringement. 

It is an actionable wrong for the defendant to represent, for trading 
purposes, that his goods are those or that his business is that of the 
plaintiff, and it makes no difference whether the representation is 
effected by direct statements, or by using some of the badges colour- 
ably resembling these, in connection with goods of the same kind, not 
being the goods of the plaintiff, in such manner as to be calculated to 
cause the goods to be taken by ordinary purchasers for the goods of 
the plaintiff. But, except in a very extreme case, this rule has never 
been applied so as to prevent the defendant honestly trading under his 
own name, or under the names of the members of his firm, or honestly 
describing his goods, and their place of origin, manner of manufacture, 
and other characteristics, in the ordinary terms current in his trade. 

The question whether the use of particular words or badges is 
calculated to pass off the defendant's goods as those of the plaintiff, or 
is merely honestly descriptive, is often one of difficulty, but it is, in sub- 
stance, a question of fact. 

The principle of law may be very plainly stated that nobody has 
any right to represent his goods as the goods of somebody else. How 
far the use of particular words, signs, or pictures, does or does not come 
up to the proposition enunciated in each particular case must always 
be a question of evidence, and the more simple the phraseology, the 
more like it is to a mere description of the article sold, the greater 
becomes the difficulty of proof ; but if the proof establishes the fact, the 
legal consequence appears to follow. 

"Passing Off": The Common Laiv Remedy. 

The Common Law action to restrain the defendant from passing 
off his goods as the goods of the plaintiff, is obviously the generalized 
form of the action to restrain the infringement of a Trade Mark ; and 
the old principles from which the latter action grew up are still recog- 
nized and put into force by the Courts. The Statutory action for 
infringement has been specialised, and the proof of the plaintiff's case 
in it greatly facilitated and simplified by the registration of Trade Marks 



TRADE MARKS AND MBRCHAKDISB MARKS. 29 

and the provisions of the Acts ; but the plaintiff's Trade Mark, although 
the most important, is only one of the badges by which his trade or his 
goods are, or may be, identified with him; and it is equally a wrong 
to imitate or copy any of the others — his trade-name or the get-up of 
his goods, for instance — so as to damage his trade by passing off other 
goods as his, or by leading his customers to suppose that there is a 
connection between such other goods and his business, which does not 
in fact exist. 

Passing off cases are usually cases of deliberate and intentional 
misrepresentation, and they have been treated in many reported judg- 
ments even in recent cases, in which the attention of the Court was not 
directed to the point, as though fraud were a necessary element of the 
right of action; but it is well that this is not the case. In an action 
to restrain passing off, proof that the defendant intended to deceive, 
if his conduct is shown to be calculated to pass off his goods as those of 
the plaintiff, or to cause them to be so passed off, is no more necessary 
than in an action for infringement. And if it were necessary, it would, 
be sufficient evidence of fraud to show that the defendant continued, 
or sought to continue, to use the deceptive badges or descriptions, after 
the danger of mistake arising from their use had been brought to his 
notice. For it has never been held that innocent inception is a 
defence. 

In the leading English case of Reddaway v. Banham, it appeared 
that the plaintiffs had long made and sold '*Camel-Hair Belting." The 
defendant also sold "Camel-Hair Belting." Both beltings were really 
made of camel-hair; but it was proved that in the trade "Camel-Hair 
Belting" meant camel-hair belting of the plaintiff's manufacture, and 
that the defendant's goods were, in fact, sold for the plaintiff's. The 
Court of Appeal held that the plaintiffs were not entitled to an injunc- 
tion, but the House of Lords took a different view. Lord Herschel 
said: "What right, it was asked, can an individual have to- restrain 
another from using a common English word because he has chosen 
to employ it as his Trade Mark ? I answer, he has no such right ; but 
he has a right to insist that it shall not be used without explanation 
or qualification, if such a use would be an instrument of fraud. Who 
would suffer injury by such a conclusion, or would be the worse if the 
defendant is thus restrained ? It has been shown that the public have 
not needed the word 'Camel-Hair' to describe a particular kind of belt- 
ing, — that the words have never been used in the trade in that sense. 
Can it be said that the description 'Camel-Hair Belting,' as used by 
Banham, is the simple truth? I will not call it an abuse of language 
to say so, but certainly it is not altogether a happy expression. The 
whole merit of that description — its one virtue for Banham's purposes 
— lies in its duplicity. It means two things. At Banham's works, 
where it cannot read Reddaway 's belting, it may be construed to mean 
belting made of camel's hair. Abroad, to the German manufacturer, 
to the Bombay mill-owner, to the up-country native, it must mean Red- 
daway's belting; it can mean nothin,s: else." 

In the Birmingham V.B. case the mark was of this kind, and it 
had been registered. The Court ordered the rectification of the Regis- 
ter by the removal of the registration, but sustained the action for pass- 



30 TRADE MARKS AND MERCHANDISE MARKS. 

ing off; thus the common law Trade Mark rights were confirmed by 
the Court, but the Statutory claim on the basis of the registration was 
rejected because the mark did not conform with the requirements 
demanded by the Act to make the mark registrable. 

A plaintiff may, therefore, fail to make out a case of statutory 
infringement of Trade Mark rights because he cannot prove his title 
to the Trade Mark, or to its registration, or because he fails to prove 
that its registration extends to the goods or to all the goods in ques- 
tion, or because the registration is ordered to be annulled ; but may yet 
show that by imitating the mark claimed as a Trade Mark, or other- 
wise, the defendant has done what is calculated to ''pass off" his goods 
as those of the plaintiff. It follows that a case of ''passing-off" is 
generally added as a second string to an action for infringement, and 
is frequently successful where the Trade Mark action proper breaks 
down. 

Statutory Remedies for Infringement of 
Registered Trade Mark Rights. 

Where marks not capable of registration are used, the proprietor 
may have a remedy in an action for "passing off," but he cannot have 
a remedy for "infringement of Trade Mark," and he is thereby placed 
at a serious disadvantage. As is pointed out elsewhere, the evidence 
which is required to sustain a "passing off" action is not always readily 
obtainable, whereas in the case of a registered Trade Mark it is suffi- 
cient to satisfy the Court that the offending party is using a mark 
colourably similar or deceptively similar to the registered mark, 
whether or not deception has actually occurred. 

Section 53 of the Trade Marks Act enacts : — 

The rights acquired by registration of a trade mark shall be deemed to be 
infringed by the use, in respect of the goods in respect of which it is regis- 
tered, of a mark substantially identical with the trade mark, or so nearly 
resembling it as to be likely to deceive. 

In an action for the infringement of a trade mark, the Court, in trying the 
question of infringement, shall admit evidence of the usages of the trade in 
respect to the get-up of those goods and of any trade marks or get-up 
legitimately used in respect of them by other persons. 

Sees. 86 to 92 contain provisions on the lines oi the Imperial 
Merchandise Act, which make false marking a criminal offence. For 
forging registered marks or falsely applying a registered mark, or 
being concerned in making or disposing of blocks or other means for 
forging registered marks, a penalty oi 3 years' imprisonment is pre- 
scribed. A person who sells or exposes for sale or imports goods 
falsely marked with a registered mark, and who fails to prove inno- 
cence of intention to defraud, is liable to a fine of iioo. 

But, although he may have had no intent to defraud, a defendant 
is not on that account held to have acted "innocently." As Lord 
Coleridge said in Wood v. Burgess, "An intent to defraud the pur- 
chaser is not a necessary ingredient of the offence charged." Thus 
a mineral- water manufacturer who fills bottles bearing another manu- 
facturer's name moulded thereon is not held to have acted "inno- 



TRADE MARKS AND MERCHANDISE MARKS. 3^ 

cently/' although he may have had no intention to pass off the con- 
tents of the bottles as other than his own manufacture, or although 
he places his own label on the bottles. The cases dealing with the 
interpretation of the term ''innocently" under the Statute are fully 
discussed in the Irish case of Thwaites v. McEvilly, in which the de- 
fendant had used his own paper labels on bottles on which the plaintiff's 
mark was blown. 

Any person concerned directly or indirectly in the commission of 
any offence against the Act, whether the act be committed in Australia 
or abroad, is liable to a fine of £100. 

When goods are imported having applied to them any forgery of 
a registered Trade Mark or having a registered mark falsely applied 
to them, or when goods produced abroad are imported bearing the 
bond fide registered Trade Mark of an AustraHan trader without a 
definite indication thereon of the country of origin, they may be seized 
by the Customs authorities and forfeited. When, however, it is de- 
termined that such contravention of the Act has not occurred either 
knowingly or negligently, the forfeiture may be waived, but security 
must be given that the improper marks will be removed or the goods 
exported forthwith. 

The Collector of Customs is empowered to require that security 
shall be given by an}' person who requests that these provisions be 
put in operation for his protection ; but the Collector may act on his 
own initiative without anv request from the registered o^vner of the 
Trade Mark. 

Forgery of a registered Trade Mark is defined to consist in the 
making of any mark the same as or deceptively similar to a registered 
Trade Mark, or in the altering or otherwise falsifying of any bond Me 
registered mark, and a mark is deemed to be appHed whether used 
on goods themselves or on their packages or anything connected with 
them, or otherwise used so as to suggest that it refers to, -describes 
or designates the goods. 

Falsely applying consists in the using of a mark without the 
assent of the proprietor of same. j 

The law prohibiting false marking and requiring correct and suffi- i 
cient marking of goods for import and export purposes, otherwise : 
than in relation to the protection of registered Trade Mark interests, j 
is contained in the Commerce Act : but that Act also incidentally pro- I 
tects registered Trade Mark interests in certain respects. Its defini- 
tion of ''Trade description" includes any description, statement, indica- 
tion or suggestion, direct or indirect, as to the manufacturer, selector, 
packer or preparer of joods for market; or as to the mode of manu- 
facturing, producing, selecting, packing or otherwise preparing the 
goods; or as to the material or ingredients of which the goods are 
composed or from which they are derived; or as to the goods being • 
the subject of an existing patent, privilege, or copyright. As a regis- 
tered Trade Mark may quite possibly indicate or suggest any one or i 
more of these things, any infringing mark conveying a like indica- \ 
tion or suggestion would be a false trade description, and the goods 
would be liable to forfeiture, and the importer or exporter thereof 
further liable to a fine of £100. \ 



m 



32 TRADE MARKS AND MBRCHANDISB MARKS 

If a person adopts and uses a Trade Mark and does not register 
it, it does not necessarily follow that by describing it as his Trade 
Mark he is making a misrepresentation, and that is so even where 
the mark is a registrable one. In that case, however, as has been 
already pointed out, he could not sue for infringement without regis- 
tering it. 

Section 112 provides penalties for the using of the word ''regis- 
tered" on a mark or for otherwise misrepresenting it to be registered 
when, as a matter of fact, it is not registered under the Common- 
wealth Act. It would hardly be probable, however, that proceedings 
would be taken when a mark indicated as "registered" is really regis- 
tered under the old States Law. 

It is doubtful whether a defendant, prosecuted under the Mer- 
chandise Marks Act, can avail himself of the privilege, enjoyed by a 
defendant in the higher Courts, of questioning the validity of the 
registration of the mark which he has been charged with fraudulently 
imitating. Prima facie, one would think that the criminal charge 
should not deprive him of that advantage, but there would seem to be 
no judicial expression of opinion of the question. 

Threats Against Infringers. 

The proprietor of a Trade Mark may give notice that his mark 
is being infringed, and that he intends to take proceedings, without 
renderine himself liable under the Statute to an action for threats, 
and he cannot be restrained by injunction from doing so (Colley v. 
Hart). But statements not made in good faith and calculated to injure 
the trade of another, or amounting to trade libel or slander of title, 
may be restrained (Thorley's Cattle Co. v. Massam; Coulson v. Coul- 
son ; Royal Co. v. Wright and Co. ) . It appears from the last-mentioned 
case that even when the statements complained of are untrue and made 
maliciously, the plaintiff must prove special damage. But mere 
puffing of one's own goods, in however extravagant terms, is not a 
libel on the goods of rival traders (Mellin v. White). 

Loss of Bights Through Delay in Enforcing 

Them. 

A man may by his own laches lose to a greater or less extent his 
right to that protection which he would have obtained had he come 
to the Court with reasonable promptitude. In fact, that which has 
originally been a valid Trade Mark the property of an individual or 
firm entitled to protection, may become piihlici juris, — that is to say, 
the use of it may be thrown open to the public, — ^by its proprietor 
allowing his right to be so habitually infringed that the Trade Mark 
no longer conveys to those who see it the impression that the goods to 
which it is attached are of his manufacture. A short acquiescence may 
properly induce the Court not to interfere ex parte. A longer acquies- 
cence may, under the circumstances, throw serious doubt upon the 
right of the plaintiff and induce the Court not to interfere by an inter- 
locutory order, even when applied for on notice. And it is not suffi- 



TRADE MARKS AND MERCHANDISE MARKS. 33 

cient for the plaintiff to commence proceedings promptly ; if he wishes 
for an interlocutory injunction he must bring on his motion at once, 
or the Court will hold that he has shown by his own conduct that he 
does not consider such interference to be imperative. 

But where a Trade Mark has been infringed, and the owner has 
not been aware that this has been the case, he has been guilty of no 
delay in taking steps to put an end to the fraud ; and he will, there- 
fore, not be deprived of his rights by reason of his having taken no 
proceedings while he was ignorant of the infringement. Hence, where 
a defence of delay is set up, the evidence must go to show, not merely 
that the plaintiff might have been aware of the infringement which was 
going on, but that he actually was so, and that it was with such know- 
ledge that he remained quiescent. 

In Powell V. Birmingham Vinegar Brewery Co. it is said : ''There 
is another way in which a name originally a good Trade Name may 
lose its character and become puhlici juris, i.e., where the first person 
using the name does not claim the right to prevent others from using 
it, and allows other persons to use it without complaint. The name 
then comes to denote the article, and nothing more. The name be- 
comes puhlici juris, and any one whO' is at liberty to make the article can 
sell it by the name by which it is usually known." 

The mere fact that a name, lawfully adopted as a Trade Mark, 
has been extensively or generally used as the name of the article, will 
not dedicate it to the public, and deprive the original proprietor of his 
exclusive rights. This doctrine is laid down clearly in a number of 
recent cases. Thus, in Burton v. Stratton it is said: "If the primary 
object of the Trade Mark be to indicate origin or ownership, the mere 
fact that the article has obtained such a widespread sale that the mark 
has also become indicative of quality is not of itself sufficient to debar 
the owners of protection, or make it the common property of the trade. 
To hold otherwise would be to deprive the oavner of the exclusive use 
of his Trade Mark just at the time when it had become most valuable 
to him, and stood most in need of protection. But if the name be 
suffered to come into general use without objection from the proprie- 
tor, it may become merely generic or indicative of quality." 



34 TRADE MARKS AND MERCHANDISE MARKS. 



Part III, — WorKers*, Commonvv^ealtli, and 
Standardisatioxi Marks ; Patent* De- 
sig^n and Copyrig)\t Marks ; and In- 
ternational Convention. 



"Workers'" Trade Marks. 

As has been explained elsewhere, the right to ownership of a 
Trade Mark is consequential on the possession of the goodwill in the 
trade in the goods to which the mark is appHed, and the Trade Mark 
rights are inseparable from the goodwill of the trade from which they 
are derived. Here, however, a worker or association not possessed 
of any goodwill or trade rights may register a mark and sue to recover 
damages for any unauthorised use of it ; not only so, but such a Trade 
Mark is not subject to the provisions of Sections 15 to 73 of the Act, 
which limit the class of marks capable of registration, regulate official 
procedure in relation to the procuring of registration, and provide 
for alteration of the Register. Section 74 provides that such a mark 
to be capable of infringement must consist of a distinctive device, 
design, symbol or label for the purpose of indicating that articles to 
which it is applied are the exclusive production of the registrants. 
Section 75 provides that to be registrable such mark shall not be de- 
ceptively similar to any mark already registered, and that it may be 
removed for a ''prescribed cause in a prescribed manner" ; the regula- 
tions provide for the advertising of the application and settle a special 
opposition procedure. The mark must be so applied as to show 
clearly that it does not indicate any part of the goods not actually pro- 
duced by the registrant, worker or association, and it must be applied 
either by the employer or by his authority. Workers' Marks cannot 
be used in connection with the primary products of the agricultural, 
viticultural (including wine-making), horticultural, dairying (includ- 
ing butter-making and cheese-making) or pastoral industries. A 
Workers' Mark is therefore not permissible on wheat or on wool, 
though it is permissible on bread or on cloth. The penaltv under this 
Section is £50, in addition to liability to forfeiture of the goods, and 
apparently also in addition to liability for damages to the registrants. 

A critical examination of these clauses will make it clear that they 
are likely to cause inconvenience in practice. It is not possible to 
adopt a single "Union" mark for all goods, because such a mark 
would be inapplicable in the case of two lots of goods one of which is 
wholly made and the other only partly made by the registrant's asso- 
ciation. How is a mark to be made to distinguish in the case of 
clothing made from Australian tweed with imported trimmings, or in 



TRADE MARKS AND MERCHANDISE MARKS. 55 

the case of a cycle ''assembled" in Australia, but consisting entirely 
of parts imported, some in the rough and some in the finished state? 
or, in the case of tobacco made up from leaf partially manufactured 
before importation? If a single mark were adopted and applied indis- 
criminately to goods more or less wholly made and also to goods 
on which only some merely finishing touch is done by members of the 
registrant association, then clearly the mark would not fulfil its pur- 
pose. Hence a more or less elaborate system of marks would appear 
to be required for practical purposes, and these marks should vary in 
material particulars so as to be clearly distinguishable and free from 
deceptive similarity. It would seem to be necessary to take each par- 
ticular case on its merits and ensure that the Workers' Mark is 
applied in such manner as ''clearly to indicate that its application 
does not refer to describe or designate the parts of the goods not 
being the production of the registrant, worker, or of members of the 
registrant association" (Sec. 74). 

Standardisation Marks. 

When a Commonwealth or State authority, or a person or an 
association authorised by the Minister, undertakes the examination of 
any goods as to their origin, material, quality, accuracy, or other 
characteristic, or the mode of their manufacture, and adopts a certify- 
ing mark, such mark may be registered by such authority, person or 
association. Similarly, a Commonwealth or State authority (but not 
a person or association) may register a mark certifying as to condi- 
tions of manufacture. Such registrations will have the like effect as 
ordinary Trade Mark registrations, although the registrants do not 
own the goods or the trade in them ; but the registration cannot be 
assigned without the permission of the Minister. Under this clause 
(22) the Astronomer may register a mark to be applied -to instru- 
ments tested at the ObservatOiry, or Municipal authorities a mark to 
be applied to sanitary fittings, a Goldsmiths' Association "Hall Marks" 
for plate, a Wheat Buyers' Association grade marks for wheat, or a 
Merchants' Association quality marks for groceries or other goods ; or 
a State Agricultural Department a mark certifying the conditions 
under which butter has been manufactured. 



(6 



Commonwealth" Trade Mark. 



Goods produced in Australia may have four sets of "marks" 
apolied to them — (a) the Trade Mark proper, v/hich may be quite 
independent of the manufacturer's name and label; (b) the 
"Workers'" Marks; (c) the "Standardisation" Mark; and 
(d) the "Commonwealth" Mark. The Commerce Act and Regula- 
tions thereunder also provide for the application of "Trade 
Descriptions" in certain cases. The Minister is to be the 
registered proprietor of the "Commonwealth" Mark, and he may 
adopt any mark without restriction so long as it is "a distinctive 
device or label bearing the words 'Australian Labour Conditions,' 
without mentioning any State. It cannot be removed from the Regis- 



36 TRADE MARKS AND MERCHANDISE MARKS. 

ter except by the Minister, and Sections 1 5 to 73 of the Act, as in the 
case of the "Workers' " Mark, do not apply to it. The *'Common- 
wealth" Mark may only be used with the authority of the Minister 
by the ''first proprietor" upon goods manufactured by him or at his 
cost under the provisions of an award or order or an agreement under 
an industrial law or upon goods specially declared by resolution of 
both Houses of the Federal Parliament tO' have been produced under 
fair and reasonable conditions as to remuneration of the labour em- 
ployed in connection with their manufacture. The penalty for infringe- 
ment is £50, and in the case of applying the mark to imported goods 
£100. Special application must be made for permission to use the 
Commonwealth Trade Mark ; and a record will be kept in the Register 
of persons authorised to use it. 

"Patent" Marks. 

Section 125 of the Patentr Act is as follows: — 

125. It shall be the duty of all patentees and their assigns and 
legal representatives and of all persons making or vending 
any patented article for or under them to give sufficient notice 
to the public that the same is patented, either by fixing thereon 
the word "patented" together with the day and year the patent 
was granted and the number of the patent ; or when from the 
character of the article this cannot be done, by fixing to it 
or to the package v/herein one or more of them is enclosed a 
label containing the like notice ; and in any suit for infringe- 
ment by the party failing so to mark no damages shall be 
recovered by the plaintiff, except on proof that the defendant 
was duly notified of the infringement, and continued after 
such notice to make, use, or vend the article so patented. 

Section 3 of the Commerce Act defines a ''trade description" to 
include any description, statement, indication or suggestion, direct or 
indirect — "/: as to the goods being the subject of an existing patent, 
privilege, or copyright" ; and such trade description is taken to have 
been applied even when not actually placed on the goods themselves 
or their wrappers, but is used in an invoice (Coppen v. Moore). The 
penalty is £100 when the transgressor fails to satisfy the Court that 
the act complained of was committed unknowingly,, and Section 10 
provides for forfeiture of the goods, subject to possible release on cor- 
rection of the false mark. The Royal Arms should not be used as 
part of a patent mark. 

It will be observed, therefore, that the Patents Act demands 
marking of oatented articles in a prescribed style under penalty of loss 
of damages in infringement suits in respect of acts done without 
notice, and that the Commerce Act imposes a fine of £100 and for- 
feiture of the goods for using a Patent Mark where there is no patent. 

An applicant for a Patent is not a "patentee," and articles which 
are the subject of .pending applications for Patents should therefore 
not be marked "Patent." They may be marked "Patent applied for." 

These provisions will give rise to much difficulty. Nearly every 
article of trade or commerce is ot has been directly or indirectly the 
subject of a Patent granted in Australia or elsewhere. Apparently 
the policy of the law is to require all goods tO' bear notice of the fact 



TRADE MARKS AND MERCHANDISE MARKS. 37 

when there is an existing Commonwealth Patent, and to prevent the 
use of a Patent Mark in all other cases, even where the articles are 
imported and are the subject of a Patent in the country from which 
they were shipped. A Patent Mark may be misleading even when 
applied to patented goods. Take, for instance, a phonograph. The 
modern talking machine is the subject of many hundreds of Patents 
taken out from time to time for various features of it. The earlier 
Patents have expired. Where such a machine contains only indi- 
vidual parts which is the subject of a Patent, may the mark be applied 
to the case containing the machine or to the machine itself? or must 
it be applied only to the patented part? And then, if the latter is the 
case, must a separate Patent j\Iark be applied to every separate 
patented part? How, for instance, would a Patent Mark be applied 
to the recording point or the reproducing button parts, which are 
hardly larger than a pin's head ? Again, take the case of a rifle. There 
may be a Patent for the construction of the lock or for the process 
by which the steel in the barrel was made. Would a mark applied to 
the stock of the gun be a sufficient marking or a false marking in 
either or both these cases? Then in the case of expired Patents or 
Patents declared void it is doubtful if the application of a Patent 
Mark could be continued legitimately. A large proportion of imported 
goods are marked "Patent," the mark in many cases being cast on 
heavy parts. In practice, the existence of such a mark does not 
always mislead the public. No one imagines when he finds "Patent" 
on a motor-car that the intention is to represent the whole car as 
patented so that no part of it may be reproduced without infringing 
the Patent. The history of the modern auto runs through many hun- 
dreds of Patents. For instance, a great number of American cars 
made by various makers are constructed, so far as a certain feature 
of the engine is concerned, under the Selden Patent of 1895. Section 
4900 of the American law demands that these goods shall -be marked 
"Patent," and the American manufacturers must so mark them before 
sending them out of the factory. Then, on arrival here, the Australian 
law steps in and declares that unless there is an existing Australian 
Patent the importer is Hable to iioo fine and forfeiture of the articles. 
Strictly speaking, the Australian law compels patentees to apply a 
Patent Mark to each and every patented article so as to distinguish 
what it is that is the subject of Patent in each case, and where there 
is no existing Patent it puts an obligation on merchants and traders 
to erase all Patent Marks. 

The question of Patent Marks is an extremely complicated one, 
and it is quite clear that if the Customs authorities should assert their 
powers to the full in this connection the physical impossibility of abid- 
ing strictly by the letter of the law would be made clear. 

Where a name is used in connection with a patented article, and 
the article is sold under that name during the life of the Patent, upon 
the expiration of the Patent the name becomes dedicated to the public, 
whether the name be an arbitrary one, or be the surname of the 
patentee or original manufacturer. It follows, as a matter of course, 
that, on the termination of the Patent, there passes to the public the 
right to make the machine in the form in which it was constructed 



SS TRADE MARKS AND MERCHANDISE Ad ARKS. 

during the Patent. It equally follows from the cessation of the 
monopoly, and the falling of the patented device into the domain of 
things public, that, along with the public ownership of the device, there 
maist also necessarily pass to the public the generic designation of the 
thing which has arisen during the monopoly in consequence of the 
designation having been acquired by the owner, either tacitly, by accept- 
ing the benefits of the monopoly, or expressly, by his having so con- 
nected the name v/ith the machine to lend countenance to the resulting 
dedication. 

Thus, as every one, at the expiration of the Patent, had a clear 
right to manufacture and vend what was known as the *' Singer" 
sewing-machine, the plaintiff could acquire no exclusive right to the 
name ''Singer," but could, by proper Trade Mark, appropriate to itself 
names or devices indicating its own manufacture of such machines. 

In the English case of Linoleum Mfg. Co. v. Nairn, the plaintiffs 
claimed the exclusive right to the use of the word 'Xinoleum" as a 
Trade Ma.rk for the substance which had been covered by Patents 
which, prior to the time of the suit, had expired. The inventor of the 
new substance had given to it the name 'Xinoleum," and it had always 
been sold under that name during the life of the Patent. The Court 
said: ''It appears that the defendants are now minded to make, as it 
is admitted they may make, that substance. I v/ant to know what they 
are to call it. That is a question 1 have asked, but I have received 
no answer, and for this simple reason : that no answer could be given 
except that they must invent a new name. I do not take that to be 
the law. I think that, if 'Linoleum' means a substance which may be 
made by the defendants, the defendants may sell it by the name which 
that substance bears. In my opinion, it would be extremely difficult 
for a person who has been, by right of some monopoly, the sole manu- 
facturer of a nev7 article, ana has given a new name to the new 
article, meaning that new article and nothing more, to claim that the 
name is to be attributed to his manufacture alone, after his com.- 
petitors are at liberty to make the same article." 



«« 



Designs" Marks. 



Section 29 of the Designs Act is as follows : — 

(i) The owner of a registered design shall cause each article to which 
the design is applied to be marked, before delivery for sale, with the 
prescribed mark to denote that the design is registered. Penalty : 
Twenty pounds. 

(2) It shall be a defence to a prosecution under this section if the defendant 
proves to the satisfaction of the Court that he took all proper steps 
to ensure the marking of the article in accordance with sub-section 
(:) of this section. 

Kere a difficulty of the same class arises as in tlie case of the 
Patent Marks. Wall-papers, prints, collars, and other goods, the bulk 
of which are imported, are the subject of design registrations in Eng- 
land or other countries, and the registration mark will be found printed 
on or attached to them. Where the design is not registered in Aus- 
tralia this mark would need to be removed ; it would probably not be 
sufficient to merelv cover it. 



TRADE MARKS AND MERCHANDISE MARKS. 39 

"Copyright" Marks. 

British Copyright laws do not demand the marking of copyright 
works, though there is, in some cases, a necessity to insert some notice 
regarding translations and dramatisations. There is no obligation 
(except in the United States) on proprietors, importers or exporters 
to insert a Copyright Mark on works which are the subject of copy- 
right registration. Where, however, works contain such a mark it 
is obligatory on importers and exporters to ascertain that the mark is 
not a false trade description within sub-section (/) of Section 3 of 
the Commerce Act. This difficulty will arise chiefly in connection 
with American works which the law of the United States requires to 
be marked on the title page with the word "Copyright," name of the 
registrant, and the year of registration, or with another entry consist- 
ing of a longer formula. Works not protected by Copyright 
laws operating in Australia but so marked would within 
Section 3 of the Commerce Act bear a false trade des- 
cription, unless indeed the Customs authorities should see their way to 
assume, from the fact that the works contain the name of an American 
publisher, that the insertion of the copyright notice in the form quoted 
would not necessarily indicate Australian copyright, and thereby bring 
the importer or exporter within Clause 3, making him liable to for- 
feiture of the goods and fine of iioo. (See Sections 9 and 10, Com- 
merce Act.) 

International Convention, 

The Act makes special provision for bringing the Commonwealth 
within the terms of the International Convention for the protection of 
Industrial Property in respect of Trade Marks. Similar provisions are 
contained in the Patents Act and in the Designs Act, but it is not 
necessary here to refer to the incidence of these latter. When the 
necessary administrative arrangements have been made, any person 
who has applied for protection for any Trade Mark, either in the 
United Kingdom or in any other State which is a party to the Con- 
vention, shall be entitled to registration of his mark in priority to other 
applicants, and the date of registration in the Commonwealth shall be 
the same date as the date of the original application abroad. Per 
contra, Australian applicants will be entitled to similar rights of 
priority in the United Kingdom and generally in the States parties to 
the Convention. In every case, however, applications intended to take 
advantage of the international arrangements must be made within six 
months of the original application, otherwise they will only be entitled 
to be dealt with in their ordinary order, and will have no rights of 
priority as against applications filed earHer. The operation of these 
sections of the Act depends, so far as foreign States are concerned, 
upon the issue of an Imperial Order in Council definitely declaring 
the application of the International Law in respect of such foreign 
States. The countries in the Convention are : Germany, Belgium, 
Brazil, Cuba, Denmark, and the Faroe Islands, Dominican Republic, 
Spain, United States, France, Algeria, and Colonies, Great Britain! 



40 TRADE MARKS AND MERCHANDISE MARKS. 

Ceylon, New Zealand, Italy, Japan, Mexico, Norway, Netherlands, 
Dutch East Indies, Surinam, Curacao, Portugal, with the Azores and 
Madeira, Servia, Sweden, Switzerland, Tunis. 

As regards other British possessions, the Imperial Government is 
not called upon to make any Orders to give the provisions of the Act 
force. The Governor-General of the Commonwealth may issue an 
Order declaring reciprocity with any British possession whose laws 
offer similar privileges to Australian residents. It will be observed 
that these provisions do no more than ensure a right of priority of 
application as from the date of the filing of the applica- 
tion in the originating State. No title to registration is 
conferred in addition to that which may be claimed for the mark if it 
were submitted for registration under ordinary circumstances. The 
English Merchandise Act applies, not alone to Trade Marks registered 
in the United Kingdom, but to marks which either with or without 
registration are protected by law under the Convention arrangements. 
The Commonwealth Commerce Act, so far as it refers to registered 
Trade Marks, makes no provision corresponding with that of the 
English Merchandise Marks Act in favour of marks covered by the 
Convention arrangements. It remains to be said that the bulk of the 
provisions of the International Convention are inapplicable to Trade 
Marks; those above-mentioned securing priority being practically the 
only features of it which are reallv effective in this regard. 

It is very probable that the necessary Orders will be issued at 
an early date bringing these international and intercolonial arrange- 
ments into force. 



APPENDIX. 



The CommonMrealtli of Australia. 



Trade Marks Act. 

No'. 20 of 1905. 

An Act relating tO' Trade Marks. 



Part I.— Introductory. 

1. This Act may be cited as the Trade Marks Act 1905. 

2. This Act shall commence on a day toi be fixed by proclamation 
not less than four months after the passing of this Act. 

3. This Act is divided as follows: — 

Part I. — Introductory. 

Part II. — Administration. 

Division i. — ^The Minister, the Registrar, and the Trade 
Marks Office. Division 2. — 'The Transfer of the Adminis- 
tration of the State Trade Marks Acts. 

Part III.— Registrable Trade Marks. 

Part IV. — Registration of Trade Marks. Division i. — 
General. Division 2. — Applications. Division 3. — Opposi- 
tion. Division 4. — Registration and Effect of Registration. 
Division 5. — Renewal of Registration. 

Part V. — Assignment of Trade Marks. 

Part VI.— The Register oi Trade Marks. 

Part VII.— Workers' Trade Marks. 

Part VIIL— The Commonwealth Trade Mark. 

Part IX.— Protection of Trade Marks. 

Part X. — Miscellaneous. 



42 TRADE MARKS AND MBRCHANDISB MARKS. 

4. In this Act, except where otherwise clearly intended — 

''The Court" means the High Court or the Supreme Court of the 
State in which the Trade Marks Office is situate or a Justice 
thereof. 

"The Law Officer" means the Attorney-General or Crown Solici- 
tor of the Commonwealth. 

"Person" includes a body corporate and a firm and any associa- 
tion of persons bodies corporate or firms. 

"The Register" means the Register of Trade Marks under this 
Act. 

"Registered Trade Mark" means a trade mark registered under 
this Act. 

"The Registrar" means the Registrar of Trade Marks. 

"State Trade Marks Act" means any State Act relating to the 
Registration of Trade Marks. 

"This Act" includes all regulations made thereunder. 

5. Subject to this Act, or any Act of the Parliament, the common 
law of England relating to trade marks shall, after the commencement 
of this Act, apply throughout the Comxmonwealth. 

Provided that this section shall not affect any right, privilege, 
obligation, or liability acquired, accrued, or incurred under the law of 
any State before the commencement of this Act. 

6. The State Trade Marks Acts of each State shall, on the com- 
mencement of this Act, cease to apply to trade marks further than as 
follows : — 

(a) The State Trade Marks Act under which a trade mark is 
registered shall continue to apply to that trade mark so 
long as the registration under that Act remains in force. 

(b) Proceedings under a State Trade Marks Act, pending at 
the commencement of this Act, may be continued and com- 
pleted under the State Trade Marks Act. 

(c) Applications for the registration of trade marks may be 
received and dealt with under a State Trade Marks Act, 
if made by virtue of some right acquired, before the com- 
mencement of this Act, in pursuance of any International 
Convention for the protection of industrial property. 

7. — (i.) The Registration of a trade mark under a State Trade 
Marks Act shall cease either — 

(a) at the expiration of fourteen years from the commencement 
of this Act^ or 

(b) at the time when, under the State Trade Marks Act, the 
trade mark would, if after the comm.encement of this Act 
no fee for the continuance of its registration vv^ere paid, first 
become liable to removal from the register, 

whichever first happens. 

(2.) No fee shall be receivable nor shall any act be done after the 
commencement of this Act for the continuance of the registration of 
a trade mp*-k under a State Trade Marks Act. 



TRADE MARKS AND MERCHANDISE MARKS. 43 

8. — ( I.) The registered proprietor of a trade mark properly regis- 
tered in any State under a State Trade Marks Act may make applica- 
tion for the registration of his trade mark under this Act. 

(2.) The application shall, subject to paragraphs (3), (4) and 
(5) of this section, be dealt with in the same manner as other appli- 
cations for registration of trade marks. 

(3.) The trade mark may be registered even if it does not con- 
tain the essential particulars required by this Act, but subject, in that 
case, to such conditions and limitations as to mode or place or period 
of user as the Registrar, Law Officer, or Court thinks fit to impose. 

(4.) Where the same trade mark or a nearly identical trade mark 
is owned or registered by another proprietor in any part of the 
Commonwealth in respect of the same goods, the trade mark may 
be registered subject to such conditions and limitations as to mode 
or place of user or otherwise as the Registrar, Law Officer, or Court 
thinks fit to impose to preserve the rights of each proprietor. 

(5.) Where the trade mark or a nearly identical trade mark 
is common to the trade in another State, the registration under this Act 
shall confer no exclusive rights in that State on the registered pro- 
prietor, and that State may be excepted from the registration under 
this Act. 

(6.) The registration of the trade mark under a State Trade Marks 
Act shall cease upon its registration under this Act. 

9. — (i.) The unregistered proprietor of a trade mark in use in 
any State at the com.mencement of this Act may make application for 
the registration of his trade mark under this Act. 

(2.) The application shall, subject to paragraphs (3), (4), (5), 
and (6) of this section, be dealt with in the same manner as other 
applications for registration of trade marks. 

(3.) The trade maxk m^ay be registered if it could have been law- 
fully registered under the State Trade Marks Act in force, at the com- 
mencement of this Act, in the State in which the trade mark was then 
used, had an applica.tion for ils registration been made before the com- 
mencement of this Act. 

(4.) If the trade mark does not contain the essential particul-^rs 
required by this Act, it may nevertheless be registered subject to such 
conditions and limitations as to mode or place, or period of user, as 
the Registrar, Law Officer, or Court thinks fit tO' impose. 

(5.) Where the same trade mark or a nearly identical trade mark 
is owned or registered by another proprietor in any part of the Com- 
monwealth in respect of the same goods, the trade mark ma) be regis- 
tered subject to such conditions and limitations as to mode or place 
of user or otherwise as the Registrar, Law Officer, or Court thinks fit 
to impose to preserve the rights of each proprietor. 

(6.) Where the trade mark, or a nearh^ identical trade mark, was, 
at the commencement of this Act, common to the trade in another 
State, the registration under this Act shall confer no exclusive rights 
in that State on the registered proprietor, and that State may be 
excepted trom the registration under this Act. 



44 TRADE MARKS AND MBRCHANDISU MARKS. 



Part !!• — Administration. 

Division i. — Tut Minister, the Registrar, and the Trade 
Marks Oeeice. 

lo. The Minister for Trade and Customs or other the Minister for 
the time being administering the Department of Trade and Customs 
shall be charged with the execution of this Act. 

II. — (i.) There shall be a Registrar of Trade Marks. 

(2.) Until the Governor-General otherwise determines the Com- 
missioner of Patents shall be the Registrar of Trade Marks. 

(3.) The Governor-General may appoint a Deputy Registrar of 
Trade Marks who shall, subject to the control of the Registrar of Trade 
Marks, have all the powers conferred by this Act on the Registrar. 

12. For the purposes of this Act an office shall be established which 
shall be called the Trade Marks Office, and a sub-office shall be estab- 
lished in every State other than the State in which the Trade Marks 
Office is established. 

13. There shall be a seal of the Trade Marks Office, and impres- 
sions thereof shall be judicially noticed. 

Division 2. — 'The Transfer of the Administration of the 
State Trade Marks Acts. 

14. On the commencement of this Act, the administration of the 
State Trade Marks Acts of all the States shall be transferred to the 
Commonwealth and thereupon — 

(a) the State Trade Marks Acts of each State shall, so far as 
they have any relation to^ trade marks, cease to be adminis- 
tered by the State, and shall thereafter be administered by 
the Commonwealth so far as is necessary for the purpose 
of completing then pending proceedings and of giving effect 
to then existing rights, and the Registrar shall collect for 
each State the fees which become payable thereunder; and 

(b) all powers and functions under any State Trade Marks Act 
vested in the Governor of a State or in the Governor with 
the advice of the Executive Council of a State or in any 
Minister officer or authority of a State shall vest in the 
Governor-General or in the Governor-General in Council or 
in the Minister officer or authority exercising similar powers 
under the Commonwealth as the case requires or as is pre- 
scribed; and 

(c) all records registers deeds and documents of the Trade 
Marks Office of each State vested in or subject to- the control 
of the State shall, by force of this Act, be vested in and 
made subject to the control of the Commonwealth. 

Part III.— Registrable Trade Marks. 

15. A registrable trade mark shall consist of essential particulars 
with or without additional matter. 



TRADE MARKS AND MERCHANDISE MARKS. 45 

1 6. The essential particulars of a registrable trade mark shall be 
one or more of the following" particulars : — 

(a) A name or trading style of a person printed, impressed, or 
woven in some particular and distinctive manner; or 

(b) A written signature or copy of a written signature of the 
person applying for registration thereof or some prede- 
cessor in his business ; or 

(c) A distinctive device, mark, brand, heading, label, or ticket; 
or 

(d) An invented word or invented words ; or 

(e) A word or words having no reference to the character or 
quality of the goods, and not being a geographical name 
used or likely to be understood in a geographical sense. 

17. The additional matter which may be added to the essential 
particulars of a registrable trade mark shall be — 

(a) Any letters, words, or figures ; or 

(b) Any combination of letters, words, or figures, or of any of 
them. 

18. Except in the case of a trade mark properly registered in any 
State under a State Trade Marks Act, a registrable trade mark must 
not contain — 

(a) the words "Trade Mark," "Registered," "Registered 
Design," "Copyright," "Entered at Stationers' Hall," 
"To counterfeit this is forgery" or words to the like 
effect; or 

(b) a representation of the King, the Queen, or any member of 
the Royal Family, or of the Royal Crown. 

19. A registrable trade mark must not contain — 

(a) the word "Royal" or any word, letter, or device, indicating 
Royal or Government patronage ; or 

(b) a representation of the Royal Arms, or of the national flag 
of the United Kingdom, or of the flag of the Common- 
wealth, or of the national arms of the United Kingdom, 
or of the arms or seal of the Commonwealth or any 
State; or 

(c) a representation of any living person without his written 
consent. 

20. In determining whether any particular of a trade mark is dis- 
tinctive, regard may be had, in the case of a trade mark in actual use, 
to the extent to which user has rendered the trade mark or the par- 
ticular distinctive for the goods with respect to which the trade mark 
is sought to be registered. 

21. A trade mark may be limited in whole or in part to a par- 
ticular colour or colours, and in case of any application for the regis- 

. tration of a trade mark the fact that the trade mark is so limited shall 
be taken into consideration by any tribunal in determining whether it 
is distinctive or not. If a trade mark is registered without limitation 
of colour it shall be deemed to be registered for all colours. 



46 TRADE MARKS AND MERCHANDISE MARKS. 

Standardisation Marks. 

22. — (i.) Where any Commonwealth or State authority, or any 
association or person, undertakes the examination of any goods in 
respect of origin, material, mode or conditions of manufacture, quality, 
accuracy, or other characteristic, and certifies the result of such examin- 
ation by a mark used upon or in connexion with such goods, the 
Minister may, if he judges it to be to the public advantage, permit 
the authority association or person to register the mark as a trade 
mark in respect of such goods, whether the authority association or per- 
son is or is not a trader, or is or is not possessed of a goodwill in 
connexion with such examination and certifying. 

(2.) When registered, the trade mark shall be deemed in all 
respects to be a registered trade mark, and the authority, association, 
or person to be the registered proprietor thereof, save that the trade 
mark shall not be transmissible or assignable except with the permis- 
sion of the Minister. 

(3.) This section shall as to conditions of manufacture apply to 
Commonwealth and State authorities only. 

Part !¥", — Registration ©f Trade Marks. 

Division i. — Ge^nkral. 
23. A trade mark must be registered in respect of particular goods 
or classes of goods as prescribed. 
24. — ( I . ) I f a trad e mark — 

(a) contains parts not separately registered by the proprietor 

as trade marks, or 
{h) contains matter common to the trade or otherwise of a non- 
distinctive character, 

the Registrar or the Law Officer or the Court, in deciding whether 
the trade mark shall be entered or shall remain upon the register, may 
in his or its discretion require, as a condition of its being upon the 
register, that the proprietor shall disclaim any right to the exclusive 
use of any of those parts, or of that matter, to the exclusive use of 
w^hich they hold him not to be entitled, or that he shall make such 
other disclaimer as they think needful for the purpose of defining his 
rights under the registration. 

Provided always that no such disclaimer shall affect any rights of 
the proprietor of the trade mark except such as depend upon its 
registration. 

(2.) l^he fact that a mark or matter therein is publicly and 
honestly used by more than three several persons in any one State as a 
mark on or in connexion with similar goods shall be treated as con- 
clusive evidence that it is common to the trade. 

25. Except by order of the Court, the Registrar shall not register 
in respect of goods a trade mark identical with one belonging to a 
different proprietor which is already on the register in respect of the 
like goods, or class of goods, or so nearly resembling such a trade 
mark as to be likely to deceive. 



TRADE MARKS AND MBRCHANDISB MARKS. 47 

26. Where the name or a representation of a living person or a 
person believed by the Registrar to be livinof appears on a trade mark, 
the Registrar may require the applicant to furnish him with the con- 
sent of that person to the name or representation appearing on the 
trade mark before he proceeeds with the registration of the trade mark. 

2y. Where each of several persons applies to be registered as the 
proprietor of the same trade mark or of nearly identical trade marks 
in respect of the like goods or class of goods, the Registrar may refuse 
to register the trade mark until the rights of the applicants have been 
determined, and may himself submit or require the applicants to sub- 
mit their rights to the Court. 

28. In case of honest concurrent user or of special circumstances 
the Registrar, Law Officer, or the Court may, in his or its discretion, 
permit the registration of the same trade mark or of nearly identical 
trade marks for the like goods or class of goods by more than one pro- 
prietor, subject to such conditions and limitations as to mode or place 
of user or otherwise as he or it thinks fit toi impose. 



Associated and Series Marks. 

29. — (i.) Where application is made for the registration of a 
trade mark so nearly resembling a trade mark of the applicant which 
is already on the register as to be likely tO' deceive or cause confusion 
if used by a person other than the applicant, the Registrar may re- 
quire as a condition of registration that the trade marks shall be en- 
tered on the register as associated trade marks. 

(2.) If the proprietor of a trade mark claims to be entitled to 
the exclusive use of any part of it separately he may, if the part 
satisfies all the conditions of a trade mark, register it as a separate 
trade mark. 

(3.) When a part of a registered trade mark is registered separ- 
ately, it and the trade mark of which it forms a part shall be deemed 
to be associated trade marks, and shall be entered on the register as 
such, and the user of the whole trade mark shall for the purposes of 
this Act be deemed to be also a user of the part separately registered 
as a trade mark. 

(4.) Except for the purpose of assignment or transmission, and 
subject to the provisions of this Act as to use of associated trade 
marks, associated trade marks shall be deemed to be registered 
independently. 

30. Where under the provisions of this Act user of a registered 
trade mark is required to be proved for any purpose, the Registrar, 
Law Officer, or the Court, as the case may be, may, if and so far as 
he or it thinks fit, accept user of an associated registered trade mark, 
or of the trade mark with additions or alterations not substantially 
affecting its identity, as an equivalent for the user of the first- 
mentioned trade mark. 

31. — (i.) When a person claiming to be the proprietor of several 
trade marks, which while resembling each other in the essential par- 
ticulars thereof yet differ in respect of — 



48 TRADE MARKS AND MBRCHANDISB MARKS. 

(a) statements oi the goods for which they are respectively used 
or proposed to be used, or 

(b) statements of number, price, quahty, or names of places, 
seeks to register such trade marks, they may be registered as a series 
in one registration. 

(2.) All the trade marks in a series of trade marks so registered 
shall be deemed to be, and shall be registered as, associated trade 
marks. 

Division 2. — Appucations. 

32. — (i.) Any person, claiming to be the proprietor of a trade 
mark, may make application to the Registrar for the registration of 
his trade mark. 

(2.) The application must be made ir^ the form prescribed and 
must — 

(a) specify the goods or class of goods in respect of which the 
applicant desires the trade mark to be registered ; 

(b) state what are the essential particulars of his trade mark 
and disclaim any right tO' the exclusive use of the matter 
added to the essential particulars of his trade mark ; and 

(c) state an address within the Commonwealth as an address 
for service : 

Provided that an applicant need not disclaim his own name or 
address or the foreign equivalents thereof or that of a predecessor in 
business. 

(3.) Separate applications must be made for the registration of a 
trade mark in respect of each class of goods in respect of which the 
applicant desires it to be registered. 

33. — (i.) Every application must be lodged by being left at or 
sent by post to the Trade Marks Office or a sub-office. 

(2.) Such application shall be forthwith referred by the Registrar 
to an examiner, who shall ascertain and report whether the trade mark 
is a registrable trade mark, and whether it is identical Avith a trade 
mark already on the register under this Act or any State Trade Marks 
Act in respect of the like goods or class of goods, or so nearly re- 
sembles the latter trade mark as to be likely tO' deceive, and whether 
the trade mark or any matter therein is common to the trade. 

(3.) Subject to this Act the Registrar may either accept the appli- 
cation, with or without modifications or conditions, or refuse it. 

34. — (i.) An appeal shall lie to the Law Officer from any condi- 
tional acceptance or any refusal by the Registrar of the application. 

(2.) The Law Officer shall hear the applicant and the Registrar,, 
and shall decide whether and subject to Vv^hat conditions or modifica- 
tions (if any) the application shall be accepted. 

(3.) An applicant aggrieved ly the decision of the Law Officer 
may in the time and in the manner prescribed appeal to the Court. 

(4.) The Court shall hear the applicant and determine whether the 
application ought to be refused or ought to be accepted with or with- 
out any modifications or conditions. 



TRADE MARKS AND MERCHANDISE MARKS. 49 

35. If the applicant so desires, he may appeal direct from the 
Registrar to the Court without any appeal to the Law Officer. 

36. If the application is accepted with or without conditions or 
modifications it shall forthwith be advertised in the prescribed 
manner. 

37. If, by reason of default on the part of the applicant, the regis- 
tration of a trade mark has not been completed within twelve months 
from the date of the lodging of the application, the Registrar shall give 
notice of the non-completion to the applicant, and if, at the expiration 
of fourteen days from that notice or such further time as the Regis- 
trar in special cases permits, the registration is not completed, the appli- 
cation shall be deemed to be abandoned. 

Division 3. — Opposition. 

38. Any person may, within three months after the advertisement 
of the application or such further time not exceeding three months as 
the Registrar on application made within the first period of three 
m.onths allows, lodge at the Trade Marks Office a notice of opposition 
in duplicate to the registration of the trade mark, setting out the 
grounds on which he relies to support his notice. 

39. Every notice of opposition shall state an address in Australia 
as an address for service. 

40. The Registrar shall send a duplicate of the notice of opposi- 
tion to the applicant. 

41. — (i.) Within three months after the lodging of notice of op- 
position or such further time not exceeding three months as the 
Registrar on application made within such first mentioned three 
months allows, the applicant may lodge at the Trade Marks Office a 
counter-statement in duplicate, setting out the grounds on which he 
relies to support his application. 

(2.) If the applicant fails to so lodge a counter-statement he shall 
be deemed to have abandoned his application, and in that event he 
shall not be liable for costs, but if he lodges a counter-statement and 
thereafter abandons his application he shall, unless the Registrar 
otherwise orders, pay to the opponent such costs as the Registrar 
allows. 

(3.) The Registrar shall send a duplicate of the counter-statement 
to the opponent. 

42. — (i.) The Registrar shall fix a day for the hearing of the 
application, and shall give notice thereof to the applicant and to the 
opponent. 

(2.) On the day so fixed, or on any other day to which the hear- 
ing is adjourned, the Registrar shall hear the applicant and the oppo- 
nent, and shall decide whether the application is to be refused or 
whether it is to be granted either with or without any modifications 
or conditions. 

43. — (i.) Any party as'grieved by the decision of the Registrar 
may in the time and in the manner prescribed appeal to the Law Officer. 

(2.) The Law Officer shall hear the applicant and the opponent, 
and may determine whether the application ought to be refused or 
ought to be granted \vith or without any modifications or conditions. 



50 TRADE MARKS AND MBRCHANDISB MARKS. 

44. — ( I.) Any party aggrieved by the decision of the Law Officer 
mav in the time and in the manner prescribed appeal to the Court. 

(2.) The Court shall hear the applicant and the opponent, and 
determine whether the application ought tO' be refused or ought tO' be 
granted with or without any modifications or conditions. 

45. If either party so desires and o-ives written notice thereof the 
appeal shall be taken direct from the Registrar to the Court without 
any appeal tO' the Law Officer. 

46. If a person giving notice of opposition or appeal does not 
reside in Australia, the Registrar Lav/ Officer or the Court may order 
him to give security for costs, and if the order is not complied with 
the opposition or appeal shall Idc deemed to^ be abandoned. 

Division 4. — Re:gistration and E^fkct of Rkgistration. 

47. When an application for registration has been accepted and 
has not been opposed and the time for notice of opposition has ex- 
pired, or has been opposed and has been granted, the Registrar shall 
register the trade mark as on the date of the lodging of the applica- 
tion, which date shall be deemed to be the date of the registration, 
and shall issue to the applicant a certificate of registration of the 
trade mark in the prescribed form. 

48. The registration of a trade mark shall be for a period of 
fourteen years, but may be renewed from time tO' time in accordance 
with the provisions of this Act. 

49. — ( I.) Subject to this Act the person for the time being entered 
in the register as proprietor of a trade mark shall have power to 
assign the trade mark, and to give effectual receipts for any considera- 
tion for such assignment. 

(2.) No entry of any name shall affect the right of any owner 
of the same name to use it or its foreign equivalent. 

(3.) Any equities in respect of a trade mark may be enforced 
in like manner as in respect of any other personal property. 

50. The registration of a person as proprietor of a trade mark 
shall be prima facie evidence of his right to the exclusive use of the 
trade mark upon the goods in respect to^ which it is registered and of 
the validity of the registration. 

51. The registration of a person as proprietor of a trade mark 
shall, after the expiration of five years from the date of registration 
(in the absence of fraud) be conclusive evidence of the validity of the 
registration, and, subject to this Act, of his right to the exclusive use 
of the trade mark in respect of the goods in respect of which it is 
registered, upon the registered proprietor proving that he or his pre- 
decessors in title have continuously used the trade mark in respect of 
the goods to a substantial extent for the five years immediately pre- 
ceding the commencement of the legal proceedings. 

For the purposes of this section user shall be deemed to be con- 
tinuous if there has been no actual interruption thereof for a longer 
total period than twelve months. 

52. No person shall be entitled to institute any proceeding to pre- 
vent or recover damages for the infringement of a trade mark, tmless 
in the case of a registrable trade mark it is registered under this Act 
or a State Trade Marks Act. 



TRADE MARKS AND MERCHANDISE MARKS. 5' 

53. The rights acquired by registration of a trade mark shall be 
deemed to be infringed by the use, in respect of the goods in respect 
of which it is registered, of a mark substantially identical with the trade 
mark or so nearly resembling it as to be likely to deceive. 

In an action for the infringement of a trade mark the Court, in 
trying the question of infringement, shall admit levidence of the usages 
of the trade in respect to the get-up of those goods and of any trade 
marks or get-up legitimately used in respect of them by other persons. 

Division 5. — Renewal of Registration. 

54. The Registrar may, on application made by the registered pro- 
prietor of a trade mark in the prescribed manner, at any date not later 
than fourteen years from the date of the original registration or the 
last renewal of registration, as the case may be (in this Division 
termed "the date of the last registration"), renew the registration of 
the trade mark for a period of fourteen years from the date of the 
expiry of the period of the last registration. 

55. — At the prescribed time before the expiration of fourteen years 
from the date of the last registration of a trade mark, the Registrar 
shall send notice in the prescribed manner to the registered proprietor 
or his agent in Australia of the date at which the existing registration 
will expire and the conditions as to^ proof of substantial user and as 
to payment of fees and otherwise uoon which a renewal of such regis- 
tration may be obtained, and if at the expiration of the time pre- 
scribed in that behalf those conditions have not been duly complied 
with, the Registrar may remove the trade mark from the register, but 
any party aggrieved shall have a right to appeal in manner prescribed. 

56. Where a trade mark has been removed from the register for 
non-payment of the prescribed fee the Registrar may within three 
months from such removal if satisfied that it is just so^ to do restore 
such trade mark to the register on payment of the prescribed additional 
fee for renewal. 

57. Where a trade mark has been removed from the register for 
non-payment of the fee for renewal, it shall, nevertheless, for the 
purpose of any application for registration during one year next after 
the date of the removal, be deemed to be a trade mark which is 
already registered, unless it is shoAvn to the satisfaction of the Regis- 
trar that the non-payment of the fee arises from the death or bank- 
ruptcy or liquidation of the proprietor of the trade mark, or from his 
having ceased to carry on business, and that no person claiming under 
that proprietor or under his bankruptcy is using the trade mark. 

Part v.— Assignment of Trade Marks. 

58. A trade mark when registered may be assigned and trans- 
mitted only in connection with the goodwill of the business concerned 
in the particular goods or class of goods in respect of which it has 
been registered and shall be determinable with that goodwill. 

59. In any case where by reason of dissolution of partnership or 
other cause a person ceases to carry on business, and the goodwill 



52 TRADE MARKS AND MERCHANDISE MARKS. 

of the person does not pass to one successor but is divided, the Court 
may (subject to the provisions of this Act as to associated trade 
marks and series of trade marks), on the appHcation of any of the 
parties interested, permit an apportionment of the registered trade 
marks of the person among the persons in fact continuing the business, 
subject to such conditions and modifications as it thinks necessary in 
the pubHc interest. 

60. Associated trade marks may be assigned or transmitted only 
as a whole. 

Part VI,— The Register of Trade Marks. 

61. There shall be kept at the Trade Marks Office a Register of 
Trade Marks wherein shall be entered particulars of — 

(a) all registered trade mxarks, with the names and addresses 
of their proprietors, together with the date of registration 
and expiry thereof; 

(b) notifications of assignments and transmissions, and dis- 
claimers ; and 

(c) any other m.atters relating to registered trade marks which 
are prescribed. 

62. Where a trade mark has been lawfully assigned or trans- 
mitted, a notification of the assignment or transmission, in the form 
and authenticated in the manner prescribed, may be given to the 
Registrar, who shall thereupon register the assignment. 

63. No notice of any trust, expressed implied or constructive, shall 
be entered in the register, or be received by the Registrar. 

64. The register shall be open to the inspection of the public at 
all convenient times, on payment of the prescribed fee. 

65. Certified copies of entries in the register shall be given to any 
person applying for them on payment of the prescribed fee. 

66. Documents purporting to be copies of or extracts from the 
register, and to be certified by the Registrar and sealed with the seal 
of the Trade Marks Office, shall be admitted in evidence in all 
Federal and State Courts without further proof or production of the 
originals. 

67. No person shall wilfully — 

(a) Make any false entry in the register ; or 

(b) Make any writing falsely purporting to be a copy of an 
entry in the register; or 

(c) Produce or tender in evidence any writing falsely purport- 
ing to be a copy of an entry in the register. 

Penaltv: Three years' imprisonment. 

68. — (i.) The Registrar may, on request made in the prescribed 
manner by the registered proprietor of a trade mark, amend or alter 
the register by — 

(a) correcting any error in the name or address of the regis- 
tered proprietor of the trade mark; or 



TRADE MARKS AND MERCHANDISE MARKS. 53 

(b) altering the name or address of the registered proprietor 
who has changed his name or address ; or 

(c) cancelHng the registration of the trade mark; or 

(d) striking out any goods or classes of goods from those in 
respect of which the trade mark is registered ; or 

(e) entering a disclaimer or memorandum relating to the trade 
mark which does not in any way extend the rights given 
by the registration of the trade mark. 

(2.) Where the register has been amended or altered under this 
section the Registrar may — 

(a) cancel the certificate of registration of the trade mark, and 
issue a new certificate of registration; or 

(b) make such amendments or alterations in the certificate of 
registration of the trade mark as are rendered necessary by 
the amendment or alteration of the register. 

69. Subject to the provisions of this Act, where a person becomes 
entitled .to a registered trade mark by assignment, transmission, or 
otherwise, the Registrar shall on request, and on proof of title to his 
satisfaction, cause the name and address of the person to be entered 
on the register as proprietor of the trade mark, 

70. The registered proprietor of a trade mark may apply to the 
Court for leave to add to or alter the trade mark in any manner not 
substantially affecting its identity, and the Court may refuse or grant 
the leave on such terms as it thinks fit. If leave be granted, the Regis- 
trar shall, on service of the order of leave, cause the register to be 
altered in accordance with the order, and shall, in the prescribed man- 
ner, advertise the trade mark as altered. 

71. — ( I.) Subject to this Act, the Court, on the application of any 
person aggrieved or of the Registrar, may order the rectification of the 
register by — 

(a) the making of any entry wrongly omitted to be made in the 
register; or 

(b) the expunging of any entry wrongly made in or remaining 
on the register; or 

(c) the insertion in the register of any exception or limitation 
affecting the registration of a trade mark which in the 
opinion of the Court ought to be inserted ; or 

(d) the correction of any error or defect in the register. 

(2.) The Registrar shall only make application to the Court under 
this section in cases where he thinks the application necessary or de- 
sirable in the public interest. 

(3.) Notice of every application to the Court pursuant to this 
section (other than an application bv the Registrar) shall be given to 
the Registrar, who may be heard thereon. 

^2. — (i.) The Court may, on the application of any person 
aggrieved, if it is shown that there has been no bond iid'e user of a 
trade mark for a consecutive period of three years since the date of 
the last registration thereof, order its removal from the register, unless 
it was at the date of the application in bond dde use and had been 



54 TRADE MARKS AND MERCHANDISE MARKS. 

so for a period of six months immediately prior to the date of the 
application. 

(2.) For the purpose of this section bond fide user or use means 
user or use of a trade mark in respect of the goods in respect of 
which it is registered for the purposes of trade by the proprietor of 
the trade mark or a predecessor in title. 

73. The Registrar, upon being served with any order of the Court 
for the rectification of the register or for the removal of the registra- 
tion of a trade mark from the register by the party seeking to enforce 
it, shall cause the rectification or removal to be made accordingly. 



Part VII.— Workers' Trade Marks. 

74. — (i.) No person shall — 

(a) falsely apply to any goods for the purpose of trade or sale ; 
or 

(b) knowingly sell or expose for sale, or have in his oossession 
for sale or for any purpose of trade or manufacture, any 
goods to which there is falsely applied ; or 

(c) knowingly import into Australia any goods not produced 
in Australia to which there is applied 

a mark which is a distinctive device, design, symbol, or label regis- 
tered by any individual Australian worker or association of Australian 
workers corporate or unincorporate for the purpose of indicating that 
articles to which it is applied are the exclusive production of the 
worker or of members of the association (and which mark is hereby 
declared to be a workers' trade mark), or any mark substantially iden- 
tical with a registered workers' trade mark, or so nearly resembling 
it as to be likely to deceive. 

(2.) The workers' trade mark is falsely applied unless in truth — 

(a) the goods to which it is applied are exclusively the pro- 
duction of the worker or of members of the association; or 
(b) the goods to which it is applied are in part but not 
exclusively the production of the worker or of members of 
the association, and the mark is applied in such manner as 
clearly to indicate that its application does not refer to, 
describe, or designate the parts of the goods not being the 
production of the worker or of members of the association ; 
and 

(c) the mark is applied to the goods (being goods produced in 
Australia) by the employer for whom they are produced, 
or, with the authority of the employer, by the worker or a 
member of the association registering the mark. 

(3.) In this section — 

"Association" includes any number of associations acting to- 
gether, and in such case the members of the "association" 
shall be the members of the associations which are acting 
together ; 



TRADE MARKS AND MERCHANDISE MARKS. 55 

"Production" means production, manufacture, workmanship, 

preparation, or product of labour; 
''Produced" has a meaning corresponding with ''production." 

Penalty : Fifty pounds, in addition to any liability to forfeiture pro- 
vided by law. 

75. — (i.) A worker or association may register a workers' trade 
mark in the prescribed manner and shall thereupon be deemed the 
registered proprietor thereof, and be entitled to institute legal proceed- 
ings to prevent and recover damages for any contravention of this Part 
in respect of that trade mark. 

(2.) A workers' trade mark may be removed from the register for 
the causes and in the manner prescribed, and subject thereto the regis- 
tration of the trade mark shall continue for fourteen vears, at the ex- 
piration of which it shall cease unless renewed in the manner pre- 
scribed. 

(3.) A workers' trade mark shall not be capable of assignment 
either by act of the parties or by operation of law. 

(4.) Parts III., IV., v., and VI. of this Act shall not apply in 
lelation tO' workers' trade marks. 

(5.) A workers' trade mark shall not be registered if it is sub- 
stantially identical with any registered trade mark within the meaning 
cf this Act or so nearly resembles it as tO' be likely to deceive. 

76. Nothing in this Part shall be so construed as to make it lawful 
for any person or association or combination of persons to do any act 
which it would have been unlawful for such person, association, or com- 
bination of persons to do before the commencement of this Act. 

yy. This Part shall not apply to any primary products of the 
agricultural, viticultural (including wine-making), horticultural, 
dairying (including butter-making and cheese-making), or pastoral 
industries. 

Part VIII.— The Commonwealth Trade 

Mark. 

78. — ( I.) This Part shall apply tO: all goods included in or specified 
by a resolution passed by both Houses of the Parliament that in their 
opinion the conditions as to the remuneration of labour in connexion 
with their manufacture are fair and reasonable. 

(2.) A resolution shall be deemed tO' have been passed at the com- 
mencement of this Act by both' Houses of the Parliament that the con- 
ditions as to the remuneration of labour are fair and reasonable in 
respect of goods which are manufactured in any part of the Common- 
wealth under conditions as to the remuneration of labour Drescribed, 
required, or provided in relation to the goods, by an industrial award 
■or order, or an industrial agreement, under an industrial law. 

(3.) In this Part "an industrial law" means any Act or State Act 
existing at the commencement of this Act and providing for concilia- 
tion or arbitration or both conciliation and arbitration, or the deter- 
mination of the remuneration of labour in connexion with industrial 
matters or the manufacture of goods, or any statutory modification 



56 TRADE MARKS AND MERCHANDISE MARKS. 

amendment or re-enactment thereof respectively, or any Act or State 
Act passed after the commencement of this Act and declared by reso- 
lution of both Houses of the Parliament to be an industrial law within 
the meaning- of this Part ; and "industrial award or order" includes any 
determination of any Special Board or Court under an industrial law. 

(4.) A resolution passed or deemed to have been passed as afore- 
said may be by both Houses of the Parliament revoked in whole or in 
part, and thereupon this Part shall to the extent of the revocation 
cease to apply. 

79. — (i.) The Minister may cause to be designed and registered 
a trade mark (in this Part called the Commonwealth Trade Mark),- 
consisting of a distinctive device or label bearing the words "Aus- 
tralian Labour Conditions." 

(2.) The Commonwealth trade mark shall not contain the name 
of or indicate any State. 

(3.) Parts in., IV., v., and VI. of this Act shall not apply in 
relation to the Commonwealth trade mark. 

80. — ( I.) Upon the registration of the Commonwealth trade mark, 
the Minister shall be deemed to be the proprietor thereof, and shall 
be entitled to prevent the unauthorized application of the Common- 
wealth trade mark. 

(2.) The rights of the proprietor of the Comm.onwealth trade mark 
shall be deemed to be infringed by the unauthorized application to 
goods of a mark identical or substantially identical with the Common- 
wealth trade mark, ot so nearly resembling it as tO' be likely to deceive. 

(3.) The Minister may sue to^ prevent infringement of the Com- 
monwealth trade mark. 

81. The application of the Commonwealth trade mark to goods 
shall be deemed to be unauthorized unless — 

{a) it is applied by or by direction of the first proprietor of the 
goods, and is so applied by the authority of the Minister; 
and 
(&) it is applied to goods to which this Part applies ; and 
(c) the first proprietor of the goods has personally manufac- 
tured them, or has paid for the labour other than his own 
in connexion with their manufacture at least the minimum 
amount prescribed, required, or provided to be paid to 
persons actually making- the goods by an industrial 
award or order, or an industrial agreement under an indus- 
trial law. 

82. — (i.) The authority of the Minister to any person to apply 
the Commonwealth trade mark may be given either generally or in 
respect of specific goods, and shall be given if in his oninion the trade 
mark will not be applied except as authorized by this Part. 

(2.) The Minister may revoke his authority in whole or in part 
if in his opinion a person to whom it has been given has applied or is 
likely to apply the trade mark in a manner unauthorized by this Part. 

83. — ( I.) No person shall wilfully infringe the rights of the Minis- 
ter as proprietor of the Commonwealth trade mark. 

Penalty: Fifty pounds. 



TRADE MARKS AND MERCHANDISE MARKS. 57 

(2.) No person shall knowingly sell or expose for sale, or have in 
his possession for sale or for any purpose of trade or manufacture, any 
goods to which any mark is applied in infringement of the rights of 
the Minister as proprietor of the Commonwealth trade mark. 

Penalty: Fifty pounds. 

84. No person shall knowingly import into Australia any goods, 
not manufactured or produced in Australia, to which there is 
applied — 

(a) the Commonwealth trade mark, or 

(b) a mark substantially identical with the Commonwealth trade 
mark, or 

(c) a mark so nearly resembling the Commonwealth trade mark 
as to be likely to deceive. 

Penalty: One hundred pounds in addition to any liability to for- 
feiture provided by law. 

85. The Commonwealth trade mark may, on the application of the 
Minister, be removed from the register in the manner prescribed. 

Part IX.— Protection of Trade Marks. 

86. Whoever — 

(a) forges a registered trade mark; or 
(b) falsely applies a registered trade mark to any goods; or 

(c) makes any die, block, machine, or instrument for the pur- 
pose of forging or of being used for forging a registered 
trade mark ; or 

(d) disposes of or has in his possession any die, block, machine, 
or instrument for the purpose of forging or of being used 
for forging a registered trade mark, 

shall, unless he proves that he acted without intend to defraud, be 
guilty of an indictable offence, and liable to imprisonment for any term 
not exceeding three years. 

87. Whoever sells or exposes for sale, or has in his possession for 
sale or for any purpose of trade or manufacture, any goods to which 
any forgery of a registered trade mark is applied or to which any 
registered trade mark is falsely applied, shall be guilty of an offence 
against this Act, unless he poves — 

(a) that he acted without intend to defraud; or 

(b) that the goods were manufactured in or imported into Aus- 
tralia and the trade mark was applied to them before the 
commencement of this Act, and were held bv him bond fide 
and without intend to defraud. 

Penalty: One hundred pounds. 
88. Whoever imports into Australia any goods to which any forgery 
of a registered trade mark is aoolied or to which a registered trade 
mark is falsely applied shall, unless he proves that he did not know- 
ingly import the goods in contravention of this Act, be guilty of an 
offence against this Act. 

Penalty : One hundred pounds. 



58 TRADE MARKS AND MERCHANDISE MARKS. 

89. Whoever aids abets counsels or procures or is in any way 
knowingly directly or indirectly concerned in or privy to — 

(o) the commission of any offence against this Act; or 
{h) the commission of any act outside Australia which if com- 
mitted in Australia would be an offence against this Act, 

shall be guilty of an offence against this Act. 

Penalty: One hundred pounds. 

90. — (i.) The following goods are prohibited to be imported, and, 
if imported, may be seized as forfeited to the King: — 

{a) all goods to which any forgery of a registered trade mark is 
applied, or to which any registered trade mark is falsely 
applied; and 

(h) all goods manufactured at any place outside Australia and 
having applied to them any trade mark being the registered 
trade mark of any manufacturer dealer or trader in Aus- 
tralia, unless the trade mark is accompanied by a definite 
indication of the country in which the goods were made 
or produced. 

(2.) Subject to the regulations, the Comptroller-General, or on 
appeal from him the Minister, may, if in his opinion the contraven- 
tion has not occurred either knowingly or negligently, permit any 
goods which are liable to be or have been seized as forfeited under 
this section to be delivered to the owner or importer upon security 
being given to the satisfaction of the Comptroller-General that the 
improper marks will be effectuallv removed from the goods or that the 
goods will be forthwith exported. 

(3.) All imported goods liable tO' be seized under this section may 
be seized by any officer of Customs. 

(4.) The provisions of the Customs Act 1901 shall apply tO' the 
seizure and forfeiture of goods under this section tO' the same extent 
as if they were prohibited imports under that Act. 

(5.) Before taking any action under this section or permitting any 
officer of Customs to act thereunder, the Collector of Customs for the 
State may require any person requesting any action on the part of the 
Customs to give security in accordance with the regulations, but the 
Collector of Customs may act under this section without any request. 

91. A person shall be deemed tO' forge a registered trade mark who 
either — 

(a) without the assent of the proprietor of the trade mark or 
the authority of this Act, makes it or a mark so nearly 
resembling it as toi be likely tO' deceive ; or 

{h) falsifies any registered trade mark, whether by alteration, 
addition, effacement, or otherwise. 

92. — ( I.) A trade mark shall be deemed to be applied to any thing 
if it is woven in, impressed on, worked into, or annexed or affixed 
to, the thing. 

2. A trade mark shall be deemed to be applied to goods if — 

(a) it is applied to the goods themselves ; or 



r 



TRADE MARKS AND MERCHANDISE MARKS. 59 

{h) it is applied to any covering, label, reel, or thing in or with 
which the goods are sold or exposed or had in possession 
for any purpose of trade or manufacture ; or 

(c) it is used in any manner likely to lead to the belief that it 
refers tq or describes or designates the goods. 

(3.) "Covering" includes any stopper, glass, bottle, vessel, box, 
capsule, case, frame, or wrapper; and ''label" includes any band or 
ticket. 

(4.) A trade mark shall be deemed to be falsely applied to gcKxls 
if, without the assent of the proprietor of the trade mark or the 
authority of this Act, it or a mark so nearly resembling it as to be 
likely to deceive is applied to the goods. 

93. In any indictment, information, pleading, or proceeding in 
relation to a registered trade mark, it shall not be necessary to set out 
a copy or fac-simile of the trade mark or a description of it, but the 
trade mark may be referred to as a registered trade mark. 

Part X.~Miscellaneous. 

94. The Governor-General may make regulations, not inconsistent 
with this Act, prescribing the fees tO' be paid under this Act and all 
matters which by this Act are required or permitted to be prescribed 
or which are necessary or convenient to be prescribed for giving effect 
to this Act or for the conduct of any business relating to the Trade 
Marks Office. 

95. In addition to any other powers conferred on it by this Act, the 
Court may in relation to any appeal or application under this Act — 

{a) refuse to make any order; 

{h) order any issue of fact to be tried in such manner as it 

directs ; 
{c) order any party to deliver to the Court or to the Registrar 

the certificate of registration of any trade mark; and 
{d) order any party to pay costs to any other party. 

96. The Registrar and the Law Officer, respectively, may for the 
purposes of this Act — 

(a) summon witnesses ; 

{h) require the production of documents ; and 

{c) award costs against any party to any proceeding before him. 

97. No person who has been summoned to appear as a witness 
before the Registrar or the Law Officer shall, without lawful excuse, 
and after tender of reasonable expenses, fail tO' appear in obedience to 
the summons. 

Penalty: Fifty pounds. 

98. No person who appears before the Registrar or the Law 
Officer as a witness shall, without lawful excuse, refuse to be sw^orn 
or make an affirmation or tO' produce documents or to answer questions 
which he is lawfully required tO' answer. 

Penalty : Fifty pounds. 



6o TRADE MARKS AND MERCHANDISE MARKS. 

99. Any snm awarded for costs by the Registrar or the Law Officer 
may, in default of payment, be recovered in any civil court of com- 
petent jurisdiction as a debt due by the person against whom the order 
is made to the person in whose favour the order is made. 

100. — (i.) In any legal proceedings in which the validity of the 
registration of a registered trade mark comes into question, the Court 
or a justice may certify that the right to the exclusive use of the trade 
mark came in question and was decided in favour of the registered 
proprietor of the trade mark, and then in any subsequent action for 
infringement of the trade mark the plaintiff on obtaining a final order 
or judgment in his favour shall have his full costs, charges, and ex- 
penses as between solicitor and client, unless the Court or a Justice 
trying the subsequent action certifies that he ought not to have them. 

(2.) In this section "Court" means any Federal Court or any 
superior State Court having jurisdiction to entertain an action for 
infringement of a trade mark, and "Justice" means a Justice of any 
such Court. 

loi. No person shall wilfully make any false statement or repre- 
sentation to deceive the Registrar or any officer in the execution of this 
Act, or to procure or influence the doing or omission of anything in 
relation to this Act or any matter thereunder. 

Penalty : Three years' imprisonment. 

102. The Registrar may at any time before registration of a trade 
mark permit the amendment of the application for the registration of 
the trade mark and may at any time permit the amendment of any 
notice of opposition on such terms as to costs or Oitherwise as he thinks 
just. 

103. Where any discretionary power is by this Act given to the 
Registrar, he shall not exercise that power adversely toi the applicant 
for registration of a trade mark without (if so required within the 
prescribed time by the applicant) giving the applicant an opportunity of 
being heard personally or by his agent. 

104. Where any prescribed fee is payable in respect of any act 
or document the Registrar may refuse to permit or perform the act or 
to receive or issue the document as the case requires until the fee 
payable in respect thereof is paid. 

105. Where by this Act any time is specified within which any act 
or thing is to be done, the Registrar may, unless otherwise expressly 
provided, extend the time either before or after its expiration. 

106. Any application, notice, or other document, authorized or 
required under this Act to be left, made, or given at the Trade Marks 
Office, or to the Registrar, or to any other person, may be sent by a 
prepaid letter through the post. 

107. — (i.) Any address for service stated in any application or 
notice of opposition shall for all purposes of the application or notice 
of oipposition be deemed to be the address of the applicant or opponent, 
as the case requires, and all documents in relation tO' the application 
or notice of opposition may be served by leaving them at or sending 
them to the address for service of the applicant or opp>onent, as the 
case reauires. 



TRADE MARKS AND MERCHANDISE MARKS. 6i 

(2.) Any address for service may be changed by notice in writing 
tc the Registrar. 

108. If any person is, by reason of infancy kniacy or other in- 
ability, incapable of making any declaration or doing anything required 
or permitted by this Act or the regulations, then the guardian or com- 
mittee (if any) of such incapable person, or if there be none any 
person appointed by any Federal or State Court or Justice thereof, 
possessing jurisdiction in respect of the property of incapable persons, 
upon the petition of any person on behalf of the incapable person or 
of any other person interested in the making of such declaration or 
doing such thing, may make the declaration or a declaration as nearly 
as corresponding thereto as circumstances permit, and do the thing in 
the name and on behalf of the incapable person, and all acts done by 
such substitute shall for the purposes of this Act be as effectual as if 
done by the person for whom he is substituted. 

109. If a person who is party to a proceeding under this Act dies 
pending the proceeding, the Registrar may on request made in the pre- 
scribed manner, and on proof to his satisfaction of the transmission 
of the interest of the deceased person, substitute in the proceeding his 
successor in interest in his place, or, if he is of opinion that the interest 
of the deceased person is sufficiently represented by the surviving 
parties, permit the proceeding to continue without such substitution. 

no. Subject to the regulations the Registrar may permit any agent 
to dcH, on behalf of any other person, any act in connexion with the 
registration of trade marks or any procedure relating thereto. 

III. A certificate purporting to be under the hand of the Regis- 
trar and the seal of the Trade Marks Office as to any entry, matter, 
or thing which he is authorized by this Act to make or do shall be 
prima facie evidence of the entry having been made and of the con- 
tents thereof, and of the matter or thing having been done or left 
undone. 

112. — (i.) No person shall falsely represent that any trade mark, 
applied to any article sold by him, is registered. 

Penalty: Five pounds. 

(2.) A person shall be deemed, for the purposes of this section, 
to represent that a trade mark is registered, if he sells the article with 
the word "registered" or any word or words expressing or implying 
that a registration has been obtained for the trade mark stamped, en- 
graved, or impressed on, or otherwise applied to, the article. 

113. No person shall without the authority of the King, or of some 
member of the Royal Family, or of the Governor-General, or of the 
Governor of a State, or of some Department of the Government of the 
Commonwealth or a State (proof whereof shall lie upon the person 
accused), assume or use in connexion with any trade business calling 
or profession the Royal Arms, or arms so nearly resembling them as 
to be likely to deceive, in such a manner as to be likelv to lead other 
persons to believe that he is carrying on his trade business calling or 
profession by or under such authority. 

Penalty : Twenty pounds. 

114. No scandalous design, and no mark the use of which w'ould 
by reason of its being likely to deceive or otherwise be deemed dis- 



62 TRADE MARKS AND MERCHANDISE MARKS. 

entitled to protection in a court of justice, or the use of which would 
be contrary to law or morality, shall be used or registered as a trade 
mark or part of a trade mark. 

International and Intercolonial Arrangements. 

115. — (i.) If upon the request of the Governor-General the King 
is pleased to apply to the Commonwealth any law of the United King- 
dom for carrying into effect any arrangement made with the Govern- 
ment of any foreign State for the mutual protection of trade marks, 
then any person who has applied for protection for any trade mark 
in the United Kingdom or the Isle of Man, or in any foreign State 
with which the arrangement has been made, shall be entitled to regis- 
tration of his trade mark under this Act in priority to other applicants, 
and such registration shall have the same date as the date of the 
original application in the United Kingdom or the Isle of Man or such 
foreign State as the case may be : 

Provided that such application shall be made within six months 
from such person applying for protection in the United Kingdom or 
the Isle of Man or the foreign State with which the arrangement is 
in force : 

Provided also that nothing in this section contained shall entitle 
the proprietor of the trade mark tO' recover damages for infringements 
happening prior to the date of the actual registration of his trade mark 
in the Commonwealth. 

(2.) The use of the trade mark in the Commonwealth during the 
period aforesaid shall not invalidate its reg^istration. 

(3.) The application for the registration of a trade mark under 
this section must be made in the same manner as an ordinary applica- 
tion under this Act. 

(4.) The provisions of this section shall, in the case of foreign 
States, apply only to those foreign States with respect to which His 
Majesty, by Order in Council, has before or after the commencement 
of this Act declared the provisions of the aforesaid law to be applic- 
able, and so long only in the case of each such State as the order 
continues in force with respect to that State. 

116. — (i.) Where it is made to appear to the Governor-General 
that any British possession has made satisfactory provision for the 
protection in that possession of trade marks registered in the Common- 
wealth, the Governor-General may by order apply all or any of the 
provisions of the last preceding section with such variations or addi- 
tions (if any) as to him seem fit to trade marks registered in that 
British possession. 

(2.) An order under this section shall, from a date to be men- 
tioned therein, take effect as if its provisions were contained in this 
Act, but it shall be lawful for the Governor-General to revoke any 
such order. 



TRADE MARKS AND MBRCHANDISB MARKS. 63 



Commerce (Trade Descriptions) Act. 

No. 16 of 1905. 

An Act relating to Commerce with other Countries. 



Introductory. 

1. This Act may be cited as the Commerce (Trade Descriptions) 
Act 1905, and shall commence on a day to be fixed by proclamation 
not being- earlier than six months after the passing of this Act. 

2. This Act shall be incorporated and read as one with the 
Customs Act 1901. 

3. In this Act, unless the contrary intention appears — 

"Officer" means an officer of Customs. 

''Trade description," in relation to any goods, means any des- 
cription, statement, indication, or suggestion, direct or 
indirect — 

(a) as to the nature, number, quantity, quality, purity, class, 

grade, measure, gauge, size, or weight of the goods ; 
or 

(b) as to the country or place in or at which the goods 

were made or produced ; or 

(c) as to the manufacturer or producer of the goods or the 

person by whom they were selected, packed, or in 
any way prepared for the market ; or 

(d) as to the mode of manufactuing, producing, selecting, 

packing, or otherwise preparing the goods ; or 

(e) as to the material or ingredients of which the goods are 

composed, or from which they are derived ; or 

(f) as to the goods being the subject of an existing patent, 

privilege, or copyright, 

and includes a Customs entry relating to goods ; and any 
mark which according to the custom of the trade or common 
repute is commonly taken to be an indication of any of the 
above matters shall be deemed to be a trade description 
within the meaning of this Act. 
"False trade description" means a trade description which, by 
reason of anything contained therein or omitted therefrom, 
is false or likely to mislead in a material respect as regards 
the goods to which it is applied, and includes every altera- 
tion of a trade description, whether by way of addition, 
effacement, or otherwise, which makes the description false 
or likely to mislead in a material respect. 



64 TRADE MARKS AND MERCHANDISE MARKS. 

4. — (i.) A trade description shall be deemed to be applied to 
goods if — 

(a) it is applied to the goods themselves ; or 

(b) it is applied to any covering, label, reel, or thing used in 
connexion with the goods ; or 

(c) it is used in anv manner likely to lead to the belief that it 
describes oir designates the goods. 

(2.) "Covering" includes any stooper, glass, bottle, vessel, box, 
capsule, case, frame, or wrapper; and "label" includes any brand or 
ticket. 

Inspe:ction of Imports and Exports. 

5. — (i.) An officer may inspect and examine all prescribed goods 
which are imported, or which are entered for export or brought for 
export to any wharf or place. 

(2.) The officer may where practicable take samples of any goods 
inspected by him pursuant to this section, and the samples so taken 
shall be dealt with as prescribed. 

(3.) For the purposes of this section an officer may enter any ship, 
wharf or place, and may ooen any packages, and may do all things 
necessary to enable him to carry out his powers and duties under this 
section. 

6. Every person who intends to export any .<:^oods of a kind or 
class required under this Act to be inspected or examined by an officer 
shall, if required to do so by regulation, before the goods are shipped, 
give notice, in accordance with the regulations, to the Customs of his 
intention to export the goods and of the place where the goods may 
be inspected. 

Penalty: Twenty pounds. 

Imports. 

7. — (i.) The regulations may prohibit the importation or intro- 
duction into Australia of any specified goods unless there is applied 
to them a trade description of such character, relating to such matters, 
and applied in such manner, as is prescribed. 

(2.) All goods imported in contravention of any regulation under 
this section may be detained by the Collector and may by direction of 
the Minister be seized as forfeited to the King. 

(3.) Subject to the regulations, the Comptroller-General, or on 
appeal from him the Minister, may in any case, and if in his opinion 
the contravention has not occurred either knowingly or negligently 
shall permit any goods which are liable to be or have been seized as 
forfeited under this section to be delivered to the owner or importer 
upon security being given to the satisfaction of the Comptroller- 
General that the prescribed trade description will be applied tO' the 
goods or that they will be forthwith exported. 

(4.) No regulation under this section shall take effect until after 
the expiration of not less than three months from notification in the 
Gazette. 



TRADE MARKS AND MERCHANDISE MARKS. 65 

8. All imported goods to which a trade desoription is by this Act 
or the regulations required to be applied, and which are found in 
Australia in any package or covering in which they were imported, 
and without the prescribed trade description, shall until the contrary 
is proved be deemed to have been imported in contravention of this 
Act or of the regulations as the case may be. 

9. No person shall import any goods to which a false trade des- 
cription is applied. 

Penalty: One hundred Dounds. 

It shall be a defence to a prosecution for an offence against this 
section if the defendant proves that he did not knowingly import the 
goods in contravention of this section. 

10. All goods to which any false trade description is applied are 
hereby prohibited to be imported, and shall if imported be forfeited to 
the King. 

Provided that the Comptroller-General, or on appeal from him the 
Minister, may, if he is satisfied that any goods which have been seized 
as forfeited under this section were not knowingly imported in contra- 
vention of this Act, permit the importer to correct the false trade des- 
cription, and may, when the correction has been made to his satisfac- 
tion, order the release of the goods, subject to the payment by the 
importer to the Customs of the expenses of the seizure, and thereupon 
the forfeiture shall be remitted. 

Exports. 

II. — ^(i.) The regulations may prohibit the exportation of any 
specified goods, unless there is applied to them a trade description 
of such character, relating to such matters, and applied in such manner, 
as is prescribed. 

(2.) All such goods to which the prescribed trade description is 
not applied, which are exported or entered for export or put on board 
any ship or boat for export or brought toi any wharf or place for 
export, may be detained by the Collector, and may by direction of the 
Minister be seized as forfeited to the King. 

(3.) Subject to the regulations the CoanptroUer-General, or on 
a.ppeal from him the Minister, may in any case, and if in his opinion 
the contravention has not occurred either knowingly or negligently shall 
permit any goods which are liable to be or have been seized as for- 
feited under this section tO' be delivered to the owner or exporter, upon 
security being given to the satisfaction of the Comptroller-General that 
the goods shall not be exported in contravention of the regulations. 

12. No person shall — 

(a) knowingly apply any false trade desoription to any goods 
intended or entered for export or put on any ship or boat 
for export, or brought to any wharf or place for the purpose 
of export ; or 

(b) knowingly export or enter for export or put on an}- ship or 
boat for export any goods to which a false trade description 
is applied. 

Penalty: One hundred pounds. 



66 TRADB MARKS AND MERCHANDISE MARKS. 

13. All goods to which any false trade description is applied are 
hereby prohibited to be exported, and shall, if exported or entered for 
export or put on any ship or boat for export, or brought to any wharf 
or place for the purpose of export, be forfeited to the King. 

Provided that the Comptroller-General, or on appeal from him 
the Minister may, if he is satisfied that the owner of any goods which 
have been seized as forfeited under this section did not knowingly act 
in contravention of this Act, permit the correction of the false trade 
description, and may, when the correction has been made to his satis- 
faction, order the release of the goods, subject to the payment by the 
exporter of the expenses of the seizure, and thereupon the forfeiture 
shall be remitted. 

14. Any goods intended for export which have been inspected in 
pursuance of this Act may in manner prescribed be marked with the 
prescribed trade description. 

15. Sections seven and eleven of this Act shall not apply to any 
goods other than — 

(a) articles used for food or drink by man, or used in the 
manufacture or preparation of articles used for food or 
drink by man; or 

(b) medicines or medicinal preparations for internal or external 
use ; or 

(c) manures; or 

(d) apparel (including boots and shoes) and the materials from 
which such apparel is manufactured ; or 

(e) jewellery; or 

(f) seeds and plants. 

16. The regulations under sections seven and eleven of this Act 
shall not prescribe a trade description which discloses trade secrets 
of manufacture or preparation, unless in the opinion of the Governor- 
General the disclosure is necessary for the protection of the health or 
welfare of the public. 

MiSCEl/LANEOUS. 

17. The Governor- General may make regulations not inconsistent 
with this Act prescribing all matters and things required or permitted 
by this Act to be prescribed or which are necessary and convenient 
to be prescribed for carrying out or giving effect to this Act, and par- 
ticularly for the analysis of samples taken under this x\ct, and th-^ 
extent to which certificates of analysis shall be prima facie evidence in 
proceedings under this Act of the facts therein stated. 

18. Whoever aids, abets, counsels, or procures, or by act or omis- 
sion is in any way, directly or indirectly, knowingly concerned in the 
commission of any offence against this Act shall be deemed to have com- 
mitted that offence, and shall be punishable accordingly. 



William Brooks & Co., Ltd., Printera, Sydney. 



CONCERNING TRADE MARKS 

— CONSULT — 

Hepb urn & Spr us on 

(Foreign Members, Chartered Institute Patent Agents. London). 

Certificated 
Trade Mark & Patent A ttorney. 

169 KING STREET, SYDNEY 

(SUPREME COURT CORNER). 



CABLES : " PATENT," SYDNEY. TELEPHONE 212Q 

CODE : •* WESTERN UNION.'' ^ ELEPHONE 2329. 



Trade Mark registrations effected and Trade Mark 
searches made in the Commonwealth and abroad. 
Represented by leading members of the Profession 
in London, Paris, Berlini Washington, Montreal, 
and elsewhere. Since 1887 we have handled a 
substantial portion of the Trade Marks and Patent 
business of this country, on account of many of 
the largest Colonial, British, and American interests. 



CORRESPONDENCE SOLICITED CONCERNING TRAD] 
MARKS, PATENTS, AND DESIGNS. 



